Appeal No. 2003-1208
Application 09/590,805
Kalnitsky’s disclosure of the use of a radiation-hard transistor
would have led one of ordinary skill in the art to make this
modification.
The admitted prior art relied upon by the examiner is a
disclosure of two electrically connected devices, each of which
has three leads (answer, pages 5-6). The examiner does not rely
upon the admitted prior art for any disclosure which would have
led one of ordinary skill in the art to replace Kalnitsky’s
radiation-hard transistor with a radiation-soft transistor.
The record, therefore, indicates that the motivation for
modifying Kalnitsky so as to arrive at the integrated circuit
claimed in the appellants’ claim 22 comes from the appellants’
disclosure rather than coming from Kalnitsky. Consequently, the
record indicates that the examiner used impermissible hindsight
in rejecting the appellants’ claim 22 over Kalnitsky in view of
the admitted prior art. See W.L. Gore & Associates v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983),
cert. denied, 469 U.S. 851 (1984); In re Rothermel, 276 F.2d 393,
396, 125 USPQ 328, 331 (CCPA 1960). Accordingly, we reverse the
rejection over Kalnitsky in view of the admitted prior art of
claim 22 and claims 23-25 that depend therefrom.
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