Ex parte MORIKAWA et al. - Page 7




          Appeal No. 1999-0892                                                        
          Application No. 08/630,128                                                  


          but rather to choose a further orientation [001] for improved               
          results.                                                                    
               After careful review of the applied prior art references in            
          light of the arguments of record, we are in agreement with                  
          Appellants’ position as stated in the Briefs.  While it is                  
          proper for an Examiner to consider, not only the specific                   
          teachings of a reference, but inferences a skilled artisan might            
          draw from them, it is equally important that the teachings of               
          prior art references be considered in their entirety.  See In re            
          Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968); W.L.               
          Gore & Associates, Inc. V. Garlock, Inc., 721 F.2d 1540, 1548,              
          220 USPQ 303, 311 (Fed. Cir. 1983), cert denied, 469 U.S. 851               
          (1984).                                                                     
               In particular, in order for us to accept the Examiner’s                
          conclusions in the present factual situation, we would have to              
          improperly selectively ignore significant portions of the                   
          disclosure of the Onodera reference.  In our view, the skilled              
          artisan, considering the entirety of the disclosure of Onodera,             
          would be led away from selecting the particular gate orientation            
          specified in Appellants’ claims, i.e. an orientation producing a            
          drain current in a direction along the [01(-1)] orientation.  We            
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