Appeal No. 2002-2225
Application 09/295,132
combination of references to prepare the product proposed by the examiner based on that
combination of references, on the basis that one of ordinary skill in this art would have expected
different methods to be used where different structures are involved (answer, page 6). Indeed,
such reasoning does not explain how one of ordinary skill in this art would have arrived at the
claimed structure encompassed by the appealed claims by following the applied prior art. See
generally, Rouffet, supra (“hindsight” is inferred when the specific understanding or principal
within the knowledge of one of ordinary skill in the art leading to the modification of the prior art
in order to arrive at appellant’s claimed invention has not been explained).
Thus, we conclude that the examiner has not pointed to some teaching, suggestion or
motivation in the applied prior art to combine Vuillermoz with the knowledge in the prior art
acknowledged by appellants. See Lee, supra; Smith Industries medical Systems, Inc. v. Vital
Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d 1415, 1420-21 (Fed. Cir. 1999); Rouffet, supra;
In re Mayne, 1043 F.3d 1339, 1342, 41 USPQ2d 1451, 1454 (Fed. Cir. 1997); Fritch, 972 F.2d at
1266, 23 USPQ2d at 1783; ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 9292, 933 (Fed. Cir. 1984); In re Keller, 642 F.2d 413, 425-26, 208 USPQ 871, 881-82
(CCPA 1981).
Accordingly, we reverse the ground of rejection advanced on appeal because the
examiner has not established a prima facie case of obviousness of the claimed structure on a
semiconductor substrate encompassed by the appealed claims over the applied prior art.
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