Appeal No. 1998-0694
Application No. 08/637,009
The examiner has never really addressed the
obviousness of the claims as amended by appellant after the
previous decision by the Board. As noted by appellant, the
examiner cannot ignore limitations of a claim in making a
prior art rejection based on any alleged inadequacies of the
disclosure. All limitations of a claim must be considered in
making prior art rejections. Therefore, it was improper for
the examiner to essentially ignore the limitations to the
appealed claims which were added by amendment after the
earlier Board decision. Since the Board was never forced to
consider the obviousness of the limitations added to the
claims by amendment, the previous Board decision cannot be
relied on to support the obviousness of the claims now on
appeal.
The record in this application contains no analysis of
the obviousness of a thermal oxide film over a titanium
silicide film which prevents agglomeration of the silicide
film at the claimed temperatures but in which agglomeration
would occur in the absence of the thermal oxide. Therefore,
this record does not establish a prima facie case of
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