Appeal 2007-0378
Application 10/212,895
§ 103(a) as unpatentable over Norga in view of Roeder and further in
view of Kim.
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).
OPINION
We first consider the Examiner’s rejection of claims 1, 7, 10, 11, 17,
and 20 under 35 U.S.C. § 103(a) as unpatentable over Norga in view of
Roeder. In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). If that burden is met, the burden then shifts to the
Appellants 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 In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Regarding independent claims 1 and 11, the Examiner's rejection
essentially finds that Norga teaches a capacitor forming method with every
claimed feature except for depositing seed and paraelectric layers using the
claimed precursor. The Examiner cites Roeder as teaching this feature and
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