Appeal No. 1997-2041
Application No. 08/337,131
Chen would not have suggested to one of ordinary skill in the
art the obviousness of the invention set forth in claims 1-5,
10 and 11. Accordingly, we reverse.
Our analysis begins with the fact that in rejecting claims
under 35 U.S.C. § 103, it is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d
1596, 1600 (Fed. Cir. 1988). We note that to establish the
prima facie obviousness of a claimed invention, all of the
claimed limitations must be taught or suggested by the prior
art. See In re Royka, 490 F.2d 981, 984, 180 USPQ 580, 583
(CCPA 1974). Here, the examiner determines (Answer, pages 3
and 4) that the disclosure of Hosokawa `872 teaches all of the
features of the claimed invention except the limitations of
"forming an array of electrically erasable non-volatile memory
devices" and a semiconductor substrate that is formed from “...
a monocrystalline silicon layer....”
The examiner takes Official Notice with respect to the
limitation of forming an array of electrically erasable non-
volatile memory devices.
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