Appeal No. 1999-0559
Application No. 08/846,949
method of making the presently claimed semiconductor device.
In a decision dated August 24, 1998, a merits panel of the
Board reversed the examiner's § 102 rejection over JP '654, as
well as the examiner's § 103 rejection over Aswell in view of
the admitted prior art. The claims presently on appeal stand
rejected under 35 U.S.C. § 103 as being unpatentable over the
combined teachings of Aswell and JP '654.
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner's
rejection.
In essence, we concur with appellants that the examiner,
at best, has demonstrated how the applied prior art could be
modified to arrive at the claimed semiconductor device.
However, as pointed out by appellants, the fact that the prior
art could be modified in the manner proposed by the examiner
is not the proper test for obviousness under § 103 in the
absence of a suggestion in the prior art for the modification.
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). In the present case, the examiner has not
satisfactorily explained why one of ordinary skill in the art
would have been motivated to modify the device of Aswell to
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