Appeal No. 1999-2683
Application 08/754,564
at the claimed subject matter by substituting other dielectric
materials in Tsu including the silicon nitride of Kalnitsky
(FR3), this is essentially a statement that the claimed
subject matter could be arrived at by luck or hindsight, which
is not proper motivation. We agree with Appellant's argument
(Br7) that because all of the alternate materials in Table 1
of Tsu are oxides, and the generic term for layer 24 is "thin
oxide layer," Tsu teaches away from the use of silicon nitride
for layer 24.
For the reasons stated above, we conclude that the
Examiner has failed to state a prima facie case of obviousness
over Tsu in view of Kalnitsky and the APA as to independent
claims 18 and 26. Accordingly, the rejection of claims 18-32
is reversed.
In the Response to Argument section of the examiner's
answer, it appears that the Examiner tries to shift the
rejection to apply Kalnitsky alone or in combination with the
APA (e.g., EA9-10). This is not the stated rejection and the
Examiner cannot twist the rejection around to a new ground of
rejection by arguments made for the first time only in the
remarks. Kalnitsky is a very good reference and we think it
- 11 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007