Appeal No. 2003-1367
Application No. 09/640,237
first barrier layer’ as claimed.” (Appeal Brief, page 8.) According to appellant's argument,
planarizing only a portion of the dielectric layer 40 would not meet the claim term "planarizing,"
which requires making the entire dielectric layer planar. Appellant, however, does not point to
any evidence that the ordinary meaning of “planarizing” is restricted to only creating a globally
planar structure. We do not subscribe to appellant's interpretation of the claim term
"planarizing" since there is nothing in the claim itself or in the specification that defines or
otherwise restricts the broadest reasonable claim interpretation thereof in the manner suggested
by appellant.
We turn now to appellant's challenge to the motivation for combining Nguyen with
Nakamura found by the examiner. It is well settled that 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 under 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.
Appellant acknowledges the examiner's contention that "it is well known in the art [that]
a flat surface provides better step coverage and the ability to use optical lithography for
fabricating the ICs with submicron feature sizes." (Brief, page 8.) Appellant has not challenged
the availability of this knowledge to a person of ordinary skill in the art. See In re Ahlert,
424 F.2d 1088, 1091, 165 USPQ 418, 421 (CCPA 1970) ("Where the appellant has failed to
challenge a fact judicially noticed and it is clear that he has been amply apprised of such finding
so as to have the opportunity to make such challenge, the board's finding will be considered
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