Appeal No. 1996-4082
Application 08/179,238
Further, we agree with appellant (Brief, pages 7 to 8) that there would have been no motivation
to combine Lunardi and Adlerstein in order to achieve appellant’s recited invention. We find that the
examiner’s motivation for making the combination in the statement of the rejection (Answer, page 5)
fails to provide an explanation for why the ordinary artisan, looking at Lunardi and Adlerstein, would
have been motivated to place the collector region under the etch stop layer, as recited in the claims on
appeal. As discussed earlier, both references teach a collector region as being above the etch stop
layer. Because we find that the examiner has not made a prima facie case of obviousness, we will
reverse the decision of the examiner rejecting claims 1 to 7 under 35 U.S.C. § 103.
We also agree with appellant (Reply Brief, pages 2 to 4) that it would not have been obvious to
the ordinary artisan looking at Adlerstein that any layer could be made an etch stop layer as asserted by
the examiner (Answer, pages 6 to 7), such that the etch stop layer be over the collector region as
claimed. We conclude that just because Adlerstein teaches that a layer (18) may be used as both a
base and etch stop layer, and just because any layer could or might be used as an etch stop layer, does
not mean that the ordinary artisan would have been motivated to place a collector region under the etch
stop layer. The fact remains that the layer used by Adlerstein as an etch stop layer, layer 18 in Figure
5, is indeed above the collector region.
We turn last to appellant’s argument (Brief, page 8) that the rejection is based on impermissible
hindsight. It must be recognized that any judgement on obviousness is in a sense necessarily a
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007