Appeal No. 1999-2596
Application No. 08/866,773
The burden of establishing a prima facie case of unpatentability rests upon the
Examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The
Examiner has not provided motivation for forming a photoresist on the semiconductor
device formed by Ajika. The Examiner also has not pointed out where the Ajika, Nakamura
and Yu references disclose the formation of a photoresist on the barrier layer which is
subjected to etching. The mere fact that the prior art could be modified would not have
made the modification obvious unless the prior art suggests the desirability of the
modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984);
In re Laskowski, 871 F.2d 115, 117, 10 USPQ2d 1397, 1398 (Fed. Cir. 1989). The record
indicates that the motivation relied upon by the Examiner for selection the specific order of
steps comes from the Appellants’ description of their invention in the specification rather
than coming from the applied prior art and that, therefore, the Examiner used impermissible
hindsight in rejecting the claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983); In re Rothermel, 276 F.2d 393, 396,
125 USPQ 328, 331 (CCPA 1960). Accordingly, we reverse the Examiner’s rejection under
35 U.S.C. § 103(a) over Ajika, Nakamura, Yu, Lee and the admitted prior art.
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