Appeal No. 1998-2401
Application 08/286,106
Ehrlich and Richman is that Ehrlich and Richman both have metal
patterns, and Richman is used as a teaching that it is useful to
use a metal pattern as an oxidation or implantation mask.
(answer, page 11). However, as mentioned above in connection
with the secondary reference of Pitts, we find that the examiner
utilizes the teachings of Richman whereby Richman involves
masking in a different context, i.e., no monolayer of adsorbed
molecules is involved; no prenucleating portions of the adsorbed
layer are involved; and no selectively forming monolayers over
the prenucleated portions is involved. In this context, we
agree with appellants' statements made on page 8 of their brief.
The examiner has not explained how, given the different process
of Richman, that one of ordinary skill in the art would have a
reasonable expectation of success of using the film formed
according to Ehrlich's process, as an oxidation or implantation
mask. Moreover, we find the disparate teachings of each of
these references (maskless method of Ehrlich involving
photodissociation of an absorbed molecular monolayer versus
Richman's method including formation of an insulating layer and
a conductive layer, followed by selective removal of portions of
these layers) lacks the requirement that some teaching,
suggestion or incentive derived from the prior art supports the
combination. ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
at 1577, 221 USPQ at 933.
Hence, we reverse the rejection of claims 13-16 under
35 U.S.C. § 103 as being unpatentable over the combination of
Ehrlich and Richman.
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007