Appeal 2007-2510
Application 10/389,456
1 Motivation to Combine
2 Wang argues that the Examiner failed to establish an adequate basis to
3 combine the teaching by Economikos of making isolation structures in
4 silicon with the teachings by Van Zant that silicon and germanium are
5 semiconductors and that silicon-germanium blends are useful for making
6 fast transistors. According to Wang, the mere fact that all these materials are
7 known to be semiconductors that are useful substrates in similar devices
8 would not have been enough to motivate a person having ordinary skill in
9 the art to make the combination. (Br. at 7–8.)
10 We find that neither the Examiner nor the Wang have made out an
11 entirely satisfactory case in their respective favors. Because the burden of
12 establishing all elements of a rejection is initially on the Examiner, we are
13 constrained to find Wang's counterarguments sufficient to demonstrate error
14 by the Examiner. It simply does not follow from the Examiner's finding that
15 Economikos teaches silicon substrates for integrated circuits, that any other
16 semiconductor taught to be useful as a substrate would have been an obvious
17 substitution in the processes described by Economikos.
18 The disclosure by Economikos, however, may not be limited strictly
19 to silicon as a substrate. According to Economikos, "the present invention
20 overcomes the deficiencies of the prior art by providing a method of forming
21 a trench isolation on a semiconductor substrate comprising the steps of
22 forming a trench in the substrate . . . ." (Economikos at 2:65 to 3:1; see also
23 Economikos at 3:12ff and at 3:18ff (describing semiconductor substrates)).
24 These general disclosures, as well as claim 1, which the Examiner has cited
25 in another context, appear to indicate that the disclosed methods are not
13
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