Appeal No. 1998-2966
Application 08/605,566
Higuchi] would inherently [have] prevented an [sic] p-type
impurity [from being] introduced into the underlying
insulating film. Therefore, this limitation is also met by
the applied prior art device. [Emphasis added.]
Appellant argues that this is the epitome of improperly
relying on Appellant's disclosure for the requisite motivation
(Br5). It is argued that the Examiner committed clear legal
error in relying on the doctrine of inherency and in concluding
that one of ordinary skill in the art would have recognized that
the claimed invention would inherently flow if the references are
combined. Appellant argues "that the Examiner's back door
approach of concluding that if the applied prior art is combined
then the claimed invention would inherently result, has been
repeatedly judicially condemned as confusing obviousness with
inherency" (Br11). In summary, it is argued that the Examiner
has not established the requisite motivation to support a prima
facie case of obviousness and has erroneously relied upon the
doctrine of inherency (Br11-12).
We agree with Appellant that the Examiner's reasoning
expressed in the final rejection is erroneous. There is no
reason in the references why one of ordinary skill in the art, if
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