Ex parte FUTAKUCHI - Page 13




          Appeal No. 2000-0806                                                        
          Application No. 09/016,398                                                  


          printed circuit board 32.  Assuming that board 32 is                        
          appropriately sized to meet the claim language, however,                    
          Figure 6 clearly illustrates that semiconductor chip 12 does                
          not have substantially the same size as reinforcement base 34.              
          In Figure 6 of Dordi, semiconductor chip 12 is pictured as a                
          rectangle at the center of a much larger rectangle depicting                
          stiffener 34.  Selna contains no teaching to remedy the                     
          deficiencies of Dordi; in all embodiments shown in Selna,                   
          semiconductor chip 12 is much smaller than the board to which               
          it is mounted.  Because the combination advanced by the                     
          Examiner does not contain every element of the claimed                      
          invention, we cannot sustain the rejection of claims 14-20                  
          under 35 U.S.C.                                                             
          § 103.                                                                      


                    The Federal Circuit states that "[t]he mere fact                  
          that the prior art may be modified in the manner suggested by               
          the Examiner does not make the modification obvious unless the              
          prior art suggested the desirability of the modification."  In              
          re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84                


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