Appeal 2007-2494
Application 10/161,134
a photoresist layer 13 (FF 28). In our opinion, insufficient reason has been
provided for using the polysilicon layer 10 of Su as the optical assist layer
16 of Mason absent a factual basis establishing that the polysilicon layer 10
of Su satisfies the optical and refractive index requirements of Mason's
optical assist layer 16. Indeed, by failing to establish that polysilicon layer
10 of Su would have been reasonably expected to meet the optical and
refractive index requirements of Mason's optical assist layer 16, the
Examiner has failed to establish that the disclosures of Mason and Su could
be combined with a reasonable expectation of success. Furthermore, the
Examiner's reliance on Su is further weakened by Su's teaching that the
polysilicon layer 10 is retained as part of the patterned structure (flash
memory cell) (FF 26) whereas Mason allows optical assist layer 16 to be
removed (FF 24) and the methods of the claimed invention require the
imagable-material-support (second) layer to be removed (see e.g., claim 1).
Moreover, the Examiner's reliance on Appellant's specification (FF
30) to establish interchangeability between the optical assist layer forming
materials of Mason and the polysilicon material of Su is a classic example of
hindsight reasoning. "To imbue one of ordinary skill in the art with
knowledge of the invention in suit . . . when no prior art reference or
references of record convey or suggest that knowledge . . . is to fall victim to
the insidious effect of a hindsight syndrome wherein that which only the
inventor taught is used against its teacher." In re Fine, 837 F.2d at 1075, 5
USPQ2d at 1600, quoting W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983).
For the foregoing reasons, the Examiner has failed to establish that
claims 12-14 and 58 are obvious over the combined teachings of Mason and
12
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013