Appeal No. 1997-3695
Application No. 08/097,526
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. 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 & Assoc.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
In regard to the rejection of claims 1 through 3 under
35 U.S.C. § 103, Appellants on page 3 of the brief argue that
Johnson uses a sidewall mask of silicon nitride to etch the
underlying polysilicon which differs from the patterning
approach used by Nishida and Galeuchet. Appellants add that
Nishida and Galeuchet use photoresist patterns to form quantum
well sized openings in a silicon dioxide layer for selective
4
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