Appeal No. 1998-3074
Application 08/804,850
Our study of the applied prior art and the subject matter of claim 1 on appeal leads
us to conclude that the examiner has not set forth a prima facie case of obviousness of this
independent claim. To the extent the examiner relies upon both references, Simmons and
Mizushima, as a basis to arrive at the subject matter within 35 U.S.C. § 103 of claim 1 on
appeal, we reverse the rejection because we are
unconvinced of the proper combinability within 35 U.S.C. § 103 of the teachings of both
references. The examiner's position of combinability as set forth at the top of page 4 of the
answer, that it would have been obvious to combine both references in order to integrate
them, essentially begs the question. No persuasive rationale has been set forth by the
examiner which convinces us that it would have been obvious from an artisan's point of
view to have combined the teachings of Mizushima and Simmons within 35 U.S.C. § 103.
To the extent the examiner's reasoning in the remarks portion of the answer may be
construed as basing the rejection on Simmons alone and, alternatively, even if the
teachings and suggestions of Simmons and Mizushima would have been obviously
combinable within 35 U.S.C. § 103, the subject matter of claim 1 on appeal would not have
resulted. The discussion at page 5 of the answer indicates that the examiner has
admittedly not provided any teaching of the applied prior art for the claimed polysilicon
patterned layer of claim 1 on appeal. Even though the appellants have not argued this
feature, the examiner's burden is still to prove the existence of such among the applied
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