Appeal No. 2001-0570
Application No. 09/049,591
something less than 30.2 nm, where 30.2 nm is “about 30 nm”, and less than 30.2 nm
would be 30 nm, which is clearly taught by Tatsumi.
We do take issue with a portion of the examiner’s rationale, wherein the
examiner suggests that it would have been obvious “to experiment and select the
reaction temperature, the flow rate and the time to achieve the maximum grain size of
HSG (rugged polysilicon) about 300 angstroms, since it has been held that where the
general conditions of a claim are disclosed in the prior art discovering the optimum
ranges involves only routine skill in the art...” [answer-page 4]. This rationale suggests
that it would have been obvious to “experiment” by selecting various factors such as
temperature, flow rate, and time in order to achieve the claimed subject matter. An
“obvious to try” rationale is not a legitimate test of patentability within the meaning of
35 U.S.C. § 103. In re Fine, 837 F.2d, 1071, 1075, 5 USPQ2d 1596, 1599 (Fed. Cir.
1988). Also see In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir.
1987); In re Goodwin, 576 F.2d 375, 377, 198, 3 USPQ 1 (CCPA 1978).
However, since Tatsumi does disclose a surface with a thickness within the
claimed range (even though Tatsumi discloses that the thickness may be as small as
30 nm, a surface having that thickness would have a “maximum thickness of less than
about 30 nm,” as claimed) we will sustain the rejection of claim 1 under 35 U.S.C.
§ 103.
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