Appeal No. 2001-1384
Application No. 08/726,229
and the primary references because Kavassalis is neither directed
to appellants’ field of endeavor nor reasonably pertinent to the
problem confronting appellants.
In any event, while Kavassalis may, indeed, show how to form
a microemulsion, the more important question, under an analysis,
within the meaning of 35 U.S.C. 103, is what would have led the
artisan, having the teachings of the primary references before
him/her, to seek to place the particles of, for example, Ahn or
Cathey, in a “microemulsion mixture,” as claimed?
Appellants allege that it was they who recognized that
particles precipitated from a microemulsion may be beneficially
used in the formation of micro-villus patterns on DRAM capacitor
electrodes. Thus, while Kavassalis, even if a viable reference,
might show that microemulsions were known, there must still be
some evidence of motivation, i.e., something that would have led
the artisan, to use such a well-known microemulsion from which to
precipitate the particles in Ahn or Cathey. Kavassalis provides
no such motivation.
With this much, we agree with appellants. However, the
examiner’s rationale is more than a substitution of Kavassalis’
microemulsion into the primary references. Rather, the examiner
contends that the particle solutions of Ahn and Cathey are
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