Appeal No. 2003-1299
Application No. 09/443,443
II. Rejection of claim 6 under 35 U.S.C. § 103 as being
unpatentable over Freeman and Lien in view of Takiar
Because we have reverse the rejection of claim 5, and
because claim 6 depends upon claim 5, we also reverse this
rejection.
III. The Rejection of claims 8, 9, 28, 29, and 31 under
35 U.S.C. § 103 over Freeman and Lien in view of White
Beginning on page 10 of the brief, appellants argue that
claim 8 requires forming a barrier layer between the capping
layer and the bond pad, wherein the barrier layer overlies the
support structures and abuts exposed portions of the bond pad.
Appellants argue that because Freeman suggests that each of
its metal layers can be made of the same material, there is no
need to incorporate an intermediate barrier film. Appellants
state that doing so would only introduce additional processing
steps in Freeman.
At the top of page 6 of the answer, the examiner’s position
is that White teaches forming a conductive pad with a capping
layer with a barrier layer, and concludes that it would have
been obvious to combine the teachings of Freeman, Lien, and
White “to enable formation of the bond pad and capping layer of
the combination to be performed”. We find this explanation by
the examiner is insufficient for a showing of obviousness. We
note that where an obviousness determination is based on a
combination of prior art references, there must be some
“teaching, suggestion or incentive supporting the combination.”
In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir.
1987). “[T]he factual inquiry whether to combine references
must be thorough and searching.” McGinley v. Franklin Sports,
Inc., 262 F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir.
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