Appeal No. 2006-1361
Application No. 09/997,019
combined teachings, knowledge of one of ordinary skill in the art, and the nature of the
problem to be solved as a whole would have suggested to those of ordinary skill in the art.
In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (citing In re Kotzab,
217 F.3d 1365, 1370, 55 USPQ2d 1313 (Fed. Cir. 2000)). See also In re Thrift, 298 F. 3d
1357, 1363, 63 USPQ2d 2002, 2008 (Fed. Cir. 2002). These showings by the examiner are
an essential part of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the arguments. See id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052,
189 USPQ 143, 147 (CCPA 1976). Only those arguments actually made by appellants have
been considered in this decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered and are deemed to be waived [see 37 CFR
§ 41.37(c)(1)(vii)(2004)].
We consider first the rejection of claims 3-5 based on Wang and Yoshihara. The
examiner has explained how the invention of these claims is deemed to be rendered obvious
by the collective teachings of the applied prior art [answer, page 7]. Appellants argue that
the artisan would not have been motivated to combine the teachings of Wang with those of
Yoshihara. Specifically, appellants argue that using the technique taught by Yoshihara in
Wang would result in a smoothening layer 60 that is just as non-planar as the dielectric layer
that it covers. Appellants argue, therefore, that the artisan would have no expectation that
the combination of Wang and Yoshihara would result in a smoothening layer 60 that has a
planar upper surface [brief, pages 15-16]. The examiner responds that the artisan would
have been motivated to combine the teachings because Yoshihara provides improved spin
coating processing techniques [answer, pages 18-19]. Appellants respond that Yoshihara
fails to teach or suggest gradually decreasing the rate of spinning to a second speed as
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