Appeal 2007-2494
Application 10/161,134
Other findings of fact are cited as necessary below.
III. Obviousness
The ultimate determination of obviousness under 35 U.S.C. § 103 is a
legal conclusion based on underlying findings of fact. In re Kotzab, 217
F.3d 1365, 1369, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000). The PTO has the
initial burden of establishing a prima facie case of obviousness. In re Fine,
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). The PTO can
satisfy this burden by showing some objective teaching in the prior art which
would have led one of ordinary skill in the art to the invention claimed.
Fine, 837 at 1074, 5 USPQ2d at 1598. However, the suggestion to combine
references must not be derived by hindsight from knowledge of the
invention itself. Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d
1573, 1578-79, 42 USPQ2d 1378, 1383 (Fed. Cir. 1997). All limitations of
the claimed invention must be taught or suggested by the prior art to
establish obviousness. In re Royka, 490 F.2d 981, 985, 180 USPQ 580, 583
(CCPA 1974).
Here, the Examiner concluded that it would have been obvious to one
of ordinary skill in the art to use the polysilicon layer 10 layer of Su to form
the optical assist layer 16 of Mason because Su teaches that a polysilicon
layer can be used to support a photoresist layer (FF 28-29). However,
Mason explicitly requires an optical assist layer 16 to be made of a
transparent or semitransparent material that has a different refractive index
from an underlying nitride layer 14 (FF 20). The Examiner has made no
factual findings establishing the optical properties, i.e., transparency or semi-
transparency, or refractive index of the polysilicon material disclosed by Su.
Rather, the Examiner finds that Su teaches a polysilicon layer 10 underlying
11
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