Appeal No. 2002-0942 Page 5
Application No. 09/553,715
the Examiner's burden of providing reasons of unpatentability. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Therefore, the thickness of the dielectric material of DiStefano et al is
totally irrelevant to the teachings claimed in the present invention.
On the other hand, Appellants' use of a claimed film thickness of 1.5 mils
has clear advantages. The capacitance value bears a direct relationship to
dielectric constant and dielectric thickness - the thinner the dielectric, the higher
the capacitance. If the dielectric layer is too thin, there is a risk of the capacitor
shorting out. Appellants' claimed thickness is an ideal thickness for achieving
maximum capacitance with a low probability of shorting. Because DiStefano et al
are not trying to create a capacitor, there is no need for them to define a
thickness for the dielectric layer, nor attach any significance to the foil thickness.
In response to the appellants' argument regarding the thickness of the coated
dielectric material, the examiner maintained (answer, pp. 6-7) that
it would have been obvious to one of ordinary skill in the art at the time the
invention was made as a matter of design choice to coat the dielectric material to
a thickness of approximately 0.0015 inch, since the appellants have not
disclosed that a thickness of approximately 0.0015 inch solves any stated
problem or is for any particular purpose and it appears that the invention would
perform equally well with the thickness shown in the DiStefano reference.
Furthermore, the specific thickness of the coated dielectric material must result
in a manipulative difference in the recited process steps as compared to the prior
art. In this instance it is obvious that the thickness of the dielectric material does
not result in any difference in the claimed manufacturing process.
In a proper obviousness determination, whether the changes from the prior art
are minor, the changes must be evaluated in terms of the whole invention, including
whether the prior art provides any teaching or suggestion to one of ordinary skill in the
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