Appeal No. 1998-0129 Page 14
Application No. 08/438,062
contributed to the formulation of the capacitor and its
integration into MMICs, resulting in the Okouchi Award.
Appellants assert (brief, pages 10-11) that
The indicated obviousness rejections cannot be
sustained because none of the references address
the problem that Appellants have overcome.
Appellants take the position (reply brief, pages 9 and 10)
that
The Examiner indicates on page 10 of the Answer
at lines 5-7 that the Examiner’s reasons for
combining prior art references need not be the same
reasons why Appellants have developed the claimed
invention and, besides, the prior art references
provide the same reasons as Appellants. (emphasis
original).
The Examiner cites no law in support of his
position. Appellants have already addressed the
issue that the references do not teach the use of
BST on GaAs to obtain stable high frequency
capacitance. Appellants now address the Examiner’s
premise that the Examiner may combine the references
for other reasons apart from the reasons why
Appellants have developed the invention. Consider
the opinion of the Court of Appeals For the Federal
Circuit on this issue:
The Commissioner argues that if it is obvious
to combine the teachings of prior art references
for any purpose, they may be combined in order
to defeat patentability of the applicant’s
admittedly new structure. The PTO states that
‘a claimed invention may be unpatentable if it
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