Appeal No. 1997-1624
Application No. 08/384,816
With respect to claim 21, appellant again argues (Reply
Brief, page 4) that Tamagawa does not disclose the material
since the structure is not met. As explained above, the
structure is met by Tamagawa's element 64. Therefore, we are
unconvinced by appellant's argument, and we will affirm the
rejection of claim 21.
As to claim 22, the examiner asserts (Answer, page 6)
that it would have been obvious to use polymide for the second
isolation material "because it is one of many electrical
isolation materials for electrical isolation in
semiconductor." Appellant contends (Reply Brief, page 4) that
the examiner has not provided motivation for selecting
polymide as the second isolation material. We agree with
appellant that the examiner has failed to provide sufficient
motivation for using polymide instead of the silicon dioxide
disclosed by Cogan. "There must be some reason, suggestion,
or motivation found in the prior art whereby a person of
ordinary skill in the field of the invention would make the
combination." In re Oetiker, 977 F.2d 1443, 1447, 24 USPQ2d
1443, 1446 (Fed. Cir. 1992). Accordingly, we cannot sustain
the rejection of claim 22 and its dependent, claim 23.
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007