Appeal No. 96-0086
Application 07/979,607
whether defects are present in one’s integrated circuit” [answer-page 4]. Also, while the examiner
recognizes the lack of any specific teaching of radio communication in Katayama, the examiner explains
that radio communication is “part of the electromagnetic spectrum” [answer-page 4] and Katayama
does teach electromagnetic communication.
The examiner has failed to establish a prima facie case of obviousness with regard to the instant
claimed subject matter and the examiner’s rationale for modifying Katayama is clearly based on
impermissible hindsight.
While it might very well be that “one would want to know whether defects are present in one’s
integrated circuit,” there is simply no teaching or suggestion of any kind of testing operation in
Katayama and the examiner has presented no cogent rationale as to why the skilled artisan having
Katayama’s system before him/her would have been led to test the integrated circuits of Katayama and,
moreover, to test the circuits in the specific manner claimed.
Further, while Katayama may refer to “electromagnetic coupling,” there is no suggestion, within
the four corners of the reference, to test integrated circuits by radio communication. Had the instant
claims broadly recited “electromagnetic coupling” and the reference disclosed radio communication, we
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