Appeal No. 1997-1173
Application No. 08/428,775
we cannot agree with the examiner’s interpretation of claim 1.
Matsubara does not disclose the claimed limitation “wherein
said physical and electrical connections are formed by said
soldering metal” and the entire record is devoid of any
teaching, suggestion, or motivation as to why it would have
been obvious to one of ordinary skill in the art to modify
Matsubara in order to have a bonded structure which comprises
inter alia “a plurality of physical and electrical connections
between said integrated circuit element input/output pads and
said substrate input/output pads . . . wherein said physical
and electrical connections are formed by said soldering
metal.” Determining obviousness/
nonobviousness under 35 U.S.C. § 103(a) involves factual
inquiries into: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the
differences between the claimed invention and the prior art;
and
(4) objective evidence of nonobviousness. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). Failure to
address the differences between claims 2 through 4 and the
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