Ex parte CHIU et al. - Page 3




              Appeal No. 1998-0372                                                                                     
              Application No. 08/533,585                                                                               

                     We refer to the Final Rejection (Paper No. 13) and the Answer (Paper No. 21) for a                
              statement of the examiner's position and to the Brief (Paper No. 20) for appellants’                     
                      3                                                                                                
              position  with respect to the claims which stand rejected.                                               


                                                      OPINION                                                          
                     Claims 26-28                                                                                      
                     The examiner concludes that the subject matter of Claims 26 through 28 is                         
              rendered obvious by the disclosure of Asada.  The conclusion is based in part on the                     
              finding that the reference inherently suggests combining two different disclosed                         
              embodiments.   The suggestion is that the embodiment of Figures 1A through 1D be                         
              modified by the teachings of Figures 5A through 5D so as to “allow the bond wires to be                  
              as short as possible, while allowing the heat sink to be as large as possible.”  (Final                  
              Rejection, page 4; Answer, page 4.)                                                                      
                     Appellants do not address the examiner’s finding.  Instead, in defense of Claim 26,               
              appellants point out deficiencies in the individual embodiments -- the embodiments with                  
              heat sink 3 in Figures 1A through 1D, and heat sink 23 in Figures 5A through 5D -- which                 
              is not responsive to the rejection made.  (See Brief, page 11).  The rejection is not for                
              anticipation, but is based on what Asada would have suggested to the artisan.                            


                     3We have not considered an earlier brief (Paper No. 18) that was held to lack compliance under 37 
              CFR § 1.192.                                                                                             
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