Appeal No. 1998-1850
Application No. 08/596,613
to combine the references does not have to be identical to that of the applicant to establish
obviousness.”)).
Appellants’ position is succinctly stated on pages 3 and 4 of the Reply Brief.
Appellants assert patentability because “the prior art did not teach removal of such
implanted metal ions and did not understand the benefits of doing so.” (See Reply Brief,
page 3.) Appellants go on to state that the references fail to make any suggestion that ion
removal would be beneficial. “Accordingly, this failure to understand the benefits of
removing implanted ions represents a complete lack of motivation for combining the
references.” (Id. at 4.) However, “failure to understand the benefits” might merely mean
that the reason for combining the references is not for the same purpose as that of
appellants. The “failure to understand” does not necessarily show a lack of motivation for
combining the references.
New ground of rejection -- 37 CFR § 1.196(b)
We enter the following new ground of rejection against the claims in accordance
with 37 CFR § 1.196(b): Claims 15-18, 22-24, 40, and 41 are rejected under 35 U.S.C. §
112, second paragraph, as being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicants regard as the invention.
Claim 15 recites a “method as recited in Claim 1, further comprising the step, prior
to the step of implanting metal ions, of forming a patterned insulating layer having a surface
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