Appeal 2007-2304
Application 10/209,004
reducing current leakage. The claims merely require that a capacitor having an
electrode formed by the method has reduced current leakage. Because, like the
Appellant’s electrode, Hosaka’s electrode has rounded corners formed by wet
etching (Hosaka 3), it appears that like the Appellant’s capacitor having a rounded-
corner electrode, Hosaka’s capacitor having such an electrode has reduced current
leakage. Thus, even if Hosaka is not addressing the problem of current leakage,
the combination of Sandhu and Hosaka meets the requirements of the Appellant’s
claims 1 and 7.
The Appellant argues that obviousness requires that the applied references
suggest the desirability of their combination and provide a reasonable expectation
of success in combining their teachings (Br. 10; Reply Br. 2). Obviousness does
not require such a rigid application of the teaching-suggestion-motivation test. See
KSR Int’l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1739, 82 USPQ2d 1385, 1395
(2007). Instead, inferences from the prior art and creative steps that a person of
ordinary skill in the art would employ can be taken into account. See KSR., 127
S.Ct. at 1741, 82 USPQ2d at 1396. One of ordinary skill in the art would have
been led, through no more than ordinary creativity, to apply Hosaka’s wet etch to
Sandhu’s electrode to provide the above-discussed benefits of the wet etch
disclosed by Hosaka. See KSR., 127 S.Ct. at 1742, 82 USPQ2d at 1397 (“A person
of ordinary skill is also a person of ordinary creativity, not an automaton.”).
For the above reasons we are not convinced of reversible error in the
rejection of claims 2 and 7 and claims 4-6, 9 and 10 that stand or fall therewith.
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