Appeal No. 1997-4069 Page 6
Application No. 08/282,913
testing of an exposed die while the die is being driven or
exercised by the actual system in which the integrated circuit
is to be used.” (Appeal Br. at 7.) The examiner’s reply
follows.
A person of ordinary skill in the art would [have]
be[en] motivated to utilize the teachings of Baerg
for testing a die into the test system of Choi to be
able to conduct elaborate tests, since Choi already
teaches (col. 2, lines 26-68) his test system's
adoptability [sic] to various devices including
integrated circuits and semiconductor wafers and
Baerg provides further motivation for such an
inclusion by teaching that for performing elaborate
tests, the integrated circuit needs to be evaluated
internally requiring exposing the die. (Examiner’s
Answer at 9.)
At the outset, we note that the examiner’s rejections
focus on the content of the references. He fails to map the
exact and complete language of the claims to the teachings of
the references. “‘[T]he main purpose of the examination, to
which every application is subjected, is to try to make sure
that what each claim defines is patentable. [T]he name of the
game is the claim ....’” In re Hiniker Co., 150 F.3d 1362,
1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998) (quoting Giles S.
Rich, The Extent of the Protection and Interpretation of
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