Appeal No. 96-3997
Application No. 08/173,953
the Answer, is lacking in any rationale as to why the skilled
artisan would modify Kokai 60-239376 in such a manner. Rather
than pointing to specific information in Kokai 56-36171 that
would suggest the combination with Kokai 60-239376, the
Examiner instead has described the similarities between the
Kokai references and the claimed invention. Nowhere does the
Examiner identify any suggestion, teaching, or motivation to
combine the Kokai references nor does the Examiner establish
any findings as to the level of ordinary skill in the art, the
nature of the problem to be solved, or any other factual
findings that would support a proper obviousness analysis.
See, e.g., Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F. 3d 1568, 37 USPQ2d 1626 (Fed. Cir. 1996). We are left
to speculate why one of ordinary skill would have found it
obvious to substitute a buried implanted subsurface breakdown
region for the diffused breakdown region in Kokai 60-239376.
The only reason we can discern is improper hindsight
reconstruction of Appellants' claimed invention. In order for
us to sustain the Examiner’s rejection under 35 U.S.C. § 103,
we would need to resort to speculation or unfounded
assumptions or rationales to supply deficiencies in the
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