Appeal No. 2003-2130
Application 08/159,461
clearly discloses to one of ordinary skill in this art that the implantation and annealing steps as
disclosed therein involved both the polysilicon and the silicon oxide layers.
Accordingly, on this record, we reverse the ground of rejection under 35 U.S.C. § 112,
first paragraph.
Turning now to the ground of rejection under 35 U.S.C. § 103(a), it is further well settled
that in order to establish a prima facie case of obviousness under § 103(a), the examiner must
show that some objective teaching, suggestion or motivation in the applied prior art taken as a
whole and/or knowledge generally available to one of ordinary skill in this art would have led
that person to the claimed invention as a whole, including each and every limitation of the claims
arranged as required by the claims, without recourse to the teachings in appellant’s disclosure.
See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998);
Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1629-30 (Fed. Cir. 1996); In re Fritch, 972 F.2d 1260, 1265-66, 23 USPQ2d 1780, 1783-84
(Fed. Cir. 1992); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992);
In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed. Cir. 1989); In re Fine, 837 F.2d 1071,
1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988). In these respects, it is well settled that a
reference stands for all of the specific teachings thereof as well as the inferences one of ordinary
skill in this art would have reasonably been expected to draw therefrom, see Fritch, 972 F.2d at
1264-65, 23 USPQ2d at 1782-83; In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA
1968), presuming skill on the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ
771, 774 (Fed. Cir. 1985).
The examiner relies on the combined teachings of Geipel and Haddad in rejecting
appealed independent claim 66, on which the other here rejected appealed claims depend. In
traverse, appellant’s arguments are based on the following limitations in context in illustrative
detail [of the invention] since he is speaking to those skilled in the art. What is conventional
knowledge will be read into the disclosure. Accordingly, an applicant’s duty to tell all that is
necessary to make or use varies greatly depending upon the art to which the invention pertains.”
In re Howarth, 654 F.2d 103, 105, 210 USPQ 689, 691 (CCPA 1981).
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