Appeal No. 1997-3688
Application 08/113,887
OPINION
We will not sustain the rejection of claims 27, 31 and 32 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case. It is the burden of the Examiner to
establish why one having ordinary skill in the art would have been led to the claimed invention by
the express teachings or suggestions found in the prior art, or by implications contained in such
teachings or suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
“Additionally, when determining obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the invention.” Para-Ordnance Mfg. Inc. v. SGS
Importers Int'l Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995), cert.
denied, 519 U.S. 822 (1996), citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
On page 3 of the brief, Appellant argues that the Koto teachings cannot be used with the
teachings of Saito because Koto relies on the lack of a sidewall to have the polysilicon 6 oxidized
and expand to control bird's beak 5 growth. In short, the sidewall of Saito is inconsistent with the
silicon nitrides sandwiched polysilicon of Koto. We note that the Examiner does not respond to
this argument. See page 5 of the Examiner's answer.
The Federal Circuit states that “[t]he 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 Fritch, 972 F.2d 1260, 1266 n.14,
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