Ex Parte McQueen - Page 8




                 Appeal No. 2003-1367                                                                                                             
                 Application No. 09/640,237                                                                                                       
                 conclusive by this court.").  Instead, appellant argues that, even assuming that this statement is                               
                 true, a prima facie case has not been set forth.  Specifically, appellant argues that "Nguyen et al.                             
                 specifically teaches that a flat dielectric layer 40 is undesirable." (Appeal Brief, page 8.)  We                                
                 disagree.  Appellant has not pointed out where Nguyen "specifically" teaches that a flat dielectric                              
                 layer 40 would have been undesirable.  Appellant's contention that Nguyen teaches away from                                      
                 "planarizing" appears to be based solely on the figures, which depict a non-planar layer 40, and                                 
                 the bare fact that Nguyen does not teach global planarization.  This is not the kind of teaching                                 
                 that would "teach away" in the sense of defeating obviousness since there is nothing that                                        
                 suggests that planarizing any portion of Nguyen would likely be unproductive of the claimed                                      
                 result.  See In re Gurley, 27 F.3d 551, 552, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) ("[A]                                         
                 reference will teach away if it suggests that the line of development flowing from the reference's                               
                 disclosure is unlikely to be productive of the result sought by the applicant.").  We find that                                  
                 nothing in Nguyen suggests that it is undesirable to planarize a portion of the dielectric layer 40                              
                 above the transistor gate.                                                                                                       
                         Appellant further contends that applying Nakamura's teaching of reflow "would result in                                  
                 an absence of dielectric layer 40 covering the transistor structure 12 and 20 and may endanger                                   
                 the integrity of the transistor structures 12 and 20."  (Appeal Brief, page 8.)  Indeed, appellant                               
                 goes so far as to state that "any planarization, or polishing, of the dielectric layer 40 of Nguyen et                           
                 al. would necessarily result in the planarization of the covered structure down to the dielectric                                
                 layer 40 surface." (Appeal Brief, page 9.)  Both of the foregoing arguments result from                                          
                 appellant's incorrect understanding of the breadth of the term "planarizing."  It suffices to say                                
                 that the term "planarizing" as claimed does not require global planarization and thus one would                                  
                 not need to create an "absence of dielectric layer 40 covering the transistor structure 12 and 20"                               
                 or "planarization of the covered structure down to the dielectric layer" before fully meeting the                                
                 claimed "planarizing" limitation.  Accordingly, we find no error in the combination of Nguyen                                    
                 with Nakamura under 35 U.S.C. § 103(a).                                                                                          
                         We now consider the grounds of rejection of claims 3 and 4 under 35 U.S.C. § 103(a)                                      
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