Appeal No. 2003-0123
Application No. 09/383,781
led a person of ordinary skill in the art to select the references and combine them in
the way that would produce the claimed invention. See, e.g., Heidelberger
Druckmaschinen AG v. Hantscho Commercial Prods., Inc., 21 F.3d 1068, 1072,
30 USPQ2d 1377, 1379 (Fed. Cir. 1994) (When the patent invention is made by
combining known components to achieve a new system, the prior art must provide a
suggestion, or motivation to make such a combination.); Northern Telecom v.
Datapoint Corp., 908 F.2d 931, 934, 15 USPQ2d 1321, 1323 (Fed. Cir. 1990) (It is
insufficient that the prior art disclosed the components of the patented device, either
separately or used in other combinations; there must be some teaching, suggestion,
or incentive to make the combination made by the inventor.); Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1044, 1051, 5 USPQ 1434, 1438 (Fed. Cir.
1988).
The method of claim 1 requires the treatment of the silicon layer, opposite
the circuit side, to provide an imaging path to the underlying target circuit.
The Examiner asserts the subject matter of claim 1 is obvious over the
combination of Makita and Ohtani. According to the Examiner, Makita discloses a
method that comprises the etching of silicon material and forming a target surface.
The Examiner asserts that Makita does not disclose the step of clearing a viewing
path under the target surface. To remedy this deficiency the Examiner relies on
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