Appeal No. 2005-2351
Application No. 09/904,112
above with regard to the section 102(e) rejection of claims 40-42
and 45-46, the examiner has not specifically pointed to any
disclosure or suggestion in Kunitomo of oxidizing the upper layer
electrode. This is the first deficiency in the examiner’s
rejection. The second deficiency in the examiner’s rejection is
the failure to establish a convincing reason, suggestion or
motivation to combine the references as proposed. See In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). The examiner states that “since plasma methods are
commonly done at lower temperatures than thermal oxidation
methods one of ordinary skill in the art would perform a plasma
method rather than a thermal method with a high temperature so
that the thermal budget may be lowered.” Answer, page 16. As
correctly argued by appellants (Reply Brief, page 5), the
examiner has provided no factual basis or evidence to support
this obviousness conclusion. See In re Lee, 277 F.3d 1338, 1344-
45, 61 USPQ2d 1430, 1434-35 (Fed. Cir. 2002). Furthermore, the
examiner’s motivation presupposes that a thermal oxidation method
is used by Kunitomo and the artisan would have substituted the
gas plasma method of Joo “so that the thermal budget may be
lowered” (Answer, page 16). However, as discussed above, the
examiner has not pointed to any disclosure or teaching in
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