Appeal No. 2003-0323
Application 09/268,088
Claims 1 through 5, 10 through 14, 23 through 25, and 27 through 30 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Cohen in view of Dill. Claims 6 through 9 and 31
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cohen and Dill in view of
Desserre. We reverse these rejections.
Opinion
We agree that the Cohen reference, modified in the manner proposed by the examiner,
would meet each element of appealed claim 1. However, in order to establish that the claimed
invention would have been obvious to a person of ordinary skill in the art at the time of the
invention within the meaning of 35 U.S.C. § 103(a), the examiner must show some objective
teaching, suggestion or motivation in the applied prior art or knowledge generally available to
one of ordinary skill in the art that would have led that person to combine the teachings. In re
Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992); In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). “The mere fact that the prior art may be modified in the
manner suggested by the Examiner does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re Fritch, 972 F.2d at 1266, 23 USPQ2d at
1784-85.
The examiner acknowledges that Cohen does not teach the conductor winding 32B being
formed in a trench etched from a conductor insulation layer 25. (Answer, page 4.) The examiner
takes the position that a person of ordinary skill in the art would have been motivated to combine
Cohen and Dill “to make the top surfaces of the coil and the conductor insulation layers share a
common flat top surface in order to be better prepared for subsequent construction . . . .” (Id.)
Appellants argue that the benefit of a common flat surface as taught by Dill does not translate to
the proposed modified structure of Cohen. Specifically, appellants contend that Cohen already
produces a planarized organic insulation layer and that there is, therefore, no need to substitute
the planarized inorganic layer of Dill for the planarized organic layer of Cohen. (Reply Brief,
page 3.)
We are in agreement with appellants that a desire to form a common flat surface would
not have provided the requisite motivation for one of ordinary skill in the art to combine Cohen
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