Appeal No. 2003-0799 Page 4
Application No. 09/567,818
Barth does not specify what type of etching is used to form the silicon islands described
therein (Barth, col. 3, ll. 63-64 merely specifies etching). Selection of one of the three etching
processes which Appellants’ specification indicates were known in the art would have been
obvious to one of ordinary skill. The use of the combination anisotropic etching and RIE
process depicted in Figure 1C would have resulted in silicon islands with substantially vertical
sidewalls. Appellants themselves indicate that RIE results in the shape shown in Fig. 1B and 1C
(specification, p. 8, ll. 1-3) and no particular definition for “substantially vertical” is provided in
the specification. We, therefore, agree with the Examiner’s conclusion that the prior art as a
whole suggests the device of claim 1.
Appellants argue that the claimed device with the substantially vertical sidewalls
provides a special advantage that is not in any way taught or suggested by Barth alone or in view
of the APA. But that there is some additional advantage does not render the device unobvious.
“[T]he motivation in the prior art to combine the references does not have to be identical to that
of the applicant to establish obviousness.” In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309,
1311 (Fed. Cir, 1996). It is enough that some reason, suggestion or motivation exists in the prior
art taken as a whole for making the combination. In re Beattie, 974 F.2d 1309, 1312, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992). Here, there was reason for one of ordinary skill in the art
to seek out known etching processes for conducting the etching of Barth and Appellants’
specification indicates that the combination of anisotropic etching and RIE was known for this
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