Appeal No. 96-4083
Application 08/268,039
On page 5 of the Examiner's answer, the Examiner
argues that even though Fenner does not show installation of
the resistor 20 in a package, packages were notoriously well
known in the art and that it would have been obvious to those
skilled in the art to install the resistor 20 in a package for
protection and integration.
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
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). The Federal Circuit
reasons in Para-Ordnance Mfg. Inc. v. SGS Importers Int'l
Inc., 73 F.3d 1085, 1088-89, 37 USPQ2d 1237, 1239-40 (Fed.
Cir. 1995), cert. denied, 117 S.Ct. 80 (1996), that for the
determination of obviousness, the court must answer whether
one of ordinary skill
in the art who sets out to solve the problem and who had
before him in his workshop the prior art, would have been
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