Appeal No. 2003-0173
Application No. 09/484,473
(CCPA 1976). To establish a prima facie case of obviousness, the
examiner must explain how the applied prior art would have
provided one of ordinary skill in the art with both a suggestion
to carry out the appellants’ claimed invention and a reasonable
expectation of success in doing so. See In re Dow Chemical Co.,
837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). “Both
the suggestion and the expectation of success must be founded in
the prior art, not in the applicant’s disclosure.” Id. The
examiner has not established that the applied prior art itself
would have provided one of ordinary skill in the art with a
reasonable expectation of success in 1) replacing Asselanis’ PLZT
with Roh’s (Ba,Sr)TiO3 or SrTiO3, and etching the (Ba,Sr)TiO3 or
SrTiO3 with Asselanis’ HCl/NH4F, or 2) using Moore’s HCl/NH4F to
etch the silica layer of a semiconductor device having silica and
titanate layers. Consequently, the examiner has not carried the
burden of establishing a prima facie case of obviousness of the
appellants’ claimed invention.
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