Appeal No. 1997-3690
Application 08/427,163
the prior art, would have been reasonably expected to use the
solution that is claimed by the Appellant. However,
"[o]bviousness may not be established using hindsight or in
view of the teachings or suggestions of the invention." Para-
Ordnance Mfg. v. SGS Importers Int'l, 73 F.3d at 1087, 37
USPQ2d at 1239, citing W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d at 1551-1553, 220 USPQ at 311-313. In
addition, our reviewing court requires the PTO to make
specific findings on a suggestion to combine prior art
references. In re Dembiczak, 175 F.3d 994, 1000-01, 50 USPQ2d
1614, 1617-19 (Fed. Cir. 1999).
Upon our review of the references, we fail to find any
reason or suggestion of modifying Tsang to allow the metal
oxide spacer to become physically in contact with the gate
electrode. Tsang teaches that the metal oxide layer 16 is not
in direct contact with the gate electrode 12 but instead has
an intermediate layer between them. The Examiner's reasons of
modifying Tsang are stated that Mizuno teaches to have the
metal oxide spacer physically in contact with the gate
electrode because this would prevent modulation of gate
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