Appeal No. 1996-3444
Application No. 08/245,785
cannot sustain the 35 U.S.C. § 103 rejection of claims 3-7
dependent on claim 1 discussed above. Similarly, the
U.S.C. § 103 rejection of independent claims 8 and 16 and
claims 9-15 and 17-21 dependent thereon cannot be sustained.
The rejection of claims 1, 3, and 8 as
unpatentable over Brown in view of Sze.
In a separate obviousness rejection, the Examiner seeks
to modify the semiconductor structure of Brown by adding a
patterned insulating layer taught by Sze. In response,
Appellants argue (Brief, pages 10 and 11) that the Examiner
has failed to establish proper motivation for making the
suggested modification. We agree. The mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification. In
re Fritsch, 972 F.2d 1260, 23 USPQ2d 1780 (Fed. Cir. 1992).
The Brown reference, as correctly pointed out by the Examiner,
has a rectifying junction which extends across the entire
device. Sze, on the other hand, discloses a semiconductor
structure in which the rectifying junction is localized under
an access region in a patterned insulating layer. In our
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