Ex parte VALAINIS et al. - Page 5




             Appeal No. 1999-0576                                                                                   
             Application No. 08/576,634                                                                             


             appellants could have made but chose not to make in the brief have not been considered                 
             [see 37 CFR § 1.192(a)].                                                                               
             With respect to independent claims 1, 9 and 13, the examiner cites DiGiacomo as                        
             teaching a method for placing elements on a placement surface.  The examiner                           
             acknowledges that DiGiacomo has no teachings related to the temperature and the                        
             thermal events as set forth in the claims.  The examiner cites Phillips as teaching the                
             thermal driven placement of components.  The examiner points to various portions of                    
             Phillips and DiGiacomo as teaching the various steps of the claims on appeal.  The                     
             examiner finds that it would have been obvious to the artisan to modify the teachings of               
             DiGiacomo with the teachings of Phillips [answer, pages 3-5].                                          
             Appellants argue in great detail why the claims on appeal are not obvious over the                     
             teachings of the applied prior art [brief, pages 10-25].  The examiner fails to answer most            
             of the points raised by appellants in the brief, and the examiner simply refers to the same            
             passages of the prior art which were referred to in the rejection [answer, pages 10-11].               
             Appellants respond by highlighting arguments that the examiner failed to address, and by               
             reemphasizing why the appealed claims are not obvious in view of the applied prior art                 
             [reply brief].                                                                                         
             We essentially agree with all the positions set forth by appellants in the briefs.  The                
             examiner has failed to establish a prima facie case of obviousness.  The portions of the               


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