Appeal No. 2000-2109 Application No. 09/159,609 extensive ensuing precedent. The patent examination process centers on prior art and the analysis thereof. When patentability turns on the question of obviousness, the search for and analysis of the prior art includes evidence relevant to the finding of whether there is a teaching, motivation, or suggestion to select and combine the references relied on as evidence of obviousness. See, e.g., McGinley v. Franklin Sports., 262 F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir. 2001) ("the central question is whether there is reason to combine [the] references," a question of fact drawing on the Graham factors). We find that the Examiner states on page 3, line 19 to page 4, line 2 of the Answer that, "[i]t would have been obvious to modify the Husimi et al. device to use a second wafer as taught by Temple et al. and to thin the second wafer to the necessary thickness as taught by Buti et al." Having reviewed the Husimi, Temple and Buti references, we find no factual basis or motivation for suggesting their combination as suggested by the Examiner. Further, we find no evidence to modify the Husimi reference, in light of Temple, to replace the single doped wafer with two separate wafers bonded by silicidizing a thin metal layer therebetween. Therefore, we will not sustain the Examiner's rejection of claim 1 as being unpatentable under 35 U.S.C. § 103 over Husimi, Temple and Buti. Claims 2, 4 through 6 and 9 are dependent on claim 1, and therefore include the aforementioned limitations of 99Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007