Appeal No. 2001-1451
Application No. 09/166,656
shortcomings of Filippazzi, we cannot sustain the rejection of
claims 1 and 2.
For claims 3 through 17 and 19 through 23, the examiner
(Answer, pages 5-6) adds Chatterjee to the basic combination of
Filippazzi and AAPA to show source and drain regions. The
examiner contends (Answer, page 6) that "Chatterjee explicitly
teaches a probe 144 connected to source/drain 98 active regions."
The examiner concludes (Answer, page 6) that it would have been
obvious to connect the probes of Filippazzi "to active regions of
a MOSFET transistor, namely the source/drain regions, in order to
test the active regions of a MOSFET transistor."
In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner, in accordance with Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966), to provide a reason
why one having ordinary skill in the pertinent art would have
been led to modify the prior art to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1438
(Fed. Cir. 1988), cert. denied, 488 U.S. 825 (1988). These
showings by the examiner are an essential part of complying with
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