Ex Parte PETTERSSON et al - Page 9



            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                             

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