Appeal No. 2000-0770
Application No. 08/631,638
of a structure in which a dielectric material is isolated by an
organic material and in which the dielectric material has a
dielectric constant of “at least about 10.” Our reviewing
courts have held that, in assessing patentability of a claimed
invention, all the claim limitations must be suggested or taught
by the prior art. In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA
1974). All words in a claim must be considered in judging the
patentability of that claim against the prior art. In re
Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). As
discussed earlier, the Examiner has not established how any of
the materials used in the Robbins and Rostoker references would
result in a dielectric structure having the required dielectric
constant.
As a final commentary, we find unpersuasive the Examiner’s
suggestion (Answer, page 9) that Robbins provides a teaching of
an inherent isolation of the dielectric material from the
electrode. According to the Examiner, the addition of ceramic
particles to the dielectric material in Robbins (column 3, lines
4-6) results in a structure in which the particles are
inherently isolated from each other and from any surface in
which they would be deposited. To establish inherency, evidence
10
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