Appeal No. 1999-0878
Application 08/182,093
formed on an outside surface of the electrically insulating
material.
In the examiner's answer, the Examiner provides the
following new reasoning (EA4): "Further semiconductor chips
develop native oxides on their surfaces so chip 18 would be
deemed to posses [sic, possess] a native oxide (insulating)
layer on its surface with said contact 86 penetrating
therethrough." The Examiner also states (EA4): "Electrical
insulating materials are grown on semiconductor chip[s] as
native oxides[,] thus the chip of Lee is deemed to have one
such oxide on its surface. Typical also in this art are
metallized contacts such as Lee's 86 formed on chip surfaces
and penetrating outside the surface of said native oxide."
We agree with Appellants' arguments that the basis for
the rejection is not clear. The Examiner appears to shift
from the proposed modification of moving insulating layer 80
onto the surface of the semiconductor chip 18, to a completely
new inherency argument for the limitations in the chip 18
itself without reference to layer 80. No inherency has been
factually established. If the Examiner wants to rely on the
structure of a chip, then the Examiner should cite a reference
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