Appeal No. 1998-1850
Application No. 08/596,613
The examiner turns to Tsunohara as suggesting refinements to the basic method
taught by Havemann -- including the disclosure of an aspect ratio equal to 5 -- as showing
prima facie obviousness of the subject matter as a whole of claim 1. (See id. at 2-3.)
Appellants argue, on pages 5 through 8 of the Brief, that the combination is not well-
founded because Havemann “teaches away” from their combination. In particular, although
Havemann is recognized as making reference to high aspect ratios (“2:1 and greater
aspect ratios,” as disclosed at column 2, lines 9-14), appellants argue that the only aspect
ratio disclosed in any embodiment is 2:1 (found at column 4, lines 1-6). In addition,
appellants point to information in the “second embodiment” of Havemann, in the first full
paragraph of column 5, which is alleged to discourage the artisan from the relatively high
aspect ratio openings disclosed by Tsunohara.
“A reference may be said to teach away when a person of ordinary skill, upon
[examining] the reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was taken by the
applicant.” Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085, 1090, 37 USPQ2d
1237, 1241 (Fed. Cir. 1995) (quoting In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130,
1131 (Fed. Cir. 1994)). We agree with the examiner, for substantially the same reasons
advanced in the Final Rejection and Answer, that Havemann does not “teach away” from
the proposed combination.
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