Appeal No. 1999-2712 Page 14
Application No. 08/165,082
circuit capacitor of Koyama and would have produced the less than 200 nanometers grain size set forth
in claim 1. We are not saying that it would have been impossible to have produced the claimed less than
200 nanometers grain size in the integrated circuit capacitor of Koyama either through Brandmayr’s
process or the other processes advanced by the examiner. We find that one of ordinary skill in the art
would not have been motivated to have applied the process of Brandmayr, or the other processes
advanced by the examiner, to Koyama in an attempt to achieve a grain size of less than 200 nanometers
because of a lack of a reasonable expectation of success. None of the references relied upon by the
examiner provides a teaching that a grain size of less than 200 nanometers in a capacitor is formed in an
integrated circuit.
In addition, with regard to the additional documents relied upon by appellants in support of their
position, that have not been argued by the examiner, we need not reach these documents as the
rejection advanced by the examiner is insufficient to establish the obviousness of the claimed invention
as recited in claim 1. Accordingly, the rejection of claim 1 under 35 U.S.C. § 103 is reversed. As
claims 2-13 depend from claim 1 and the references to Miller and McMillan do not overcome the
deficiencies of Koyama and Brandmayr, the rejection of claims 2-13 is also reversed.
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