Ex parte SATO - Page 5




          Appeal No. 1998-1216                                                        
          Application 08/356,194                                                      



          vapor deposition on the first film.  In contrast, the admitted              
          prior art applies the first (i.e., the Ti) film by sputtering               
          and then a second (i.e., the TiON) film according to a                      
          chemical vapor deposition process.  With respect to each of                 
          the rejections before us, it is the examiner's position that                
                    it would have been obvious for one                                
                    skilled in the art at the time the                                
                    invention was made to have                                        
                    substituted Hirose et al's                                        
                    (5,203,959)  ECR-CVD thin film                                    
                    depositing method for the sputtering                              
                    thin film method of the [admitted]                                
                    prior art because of the advantages                               
                    associated with its use as evidenced                              
                    above, i.e. higher through put                                    
                    (Answer, page 6).                                                 
          As for the claim requirement of successively forming the                    
          second film "without exposing the first film to air," the                   
          examiner argues that "Hirose . . . teaches performing the                   
          ECR/CVD in a vacuum" and "this clearly suggests to one skilled              
          in the art that the deposition process is performed with [sic,              
          without] 'exposure' to air" (Answer, page 12).                              
                    The examiner's position is not well taken.  As                    
          correctly argued by the appellant, the Hirose disclosure is                 
          limited to forming only a single film by chemical vapor                     

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