Appeal No. 1997-1693
Application No. 08/254,667
In response, Appellants assert (Brief, pages 4 and 5) a
lack of suggestion or motivation in the references for
combining or modifying teachings to establish a prima facie
case of obviousness. After careful review of the Takahashi
and Itaru references, we are in agreement with Appellants’
stated position in the Brief. The 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, 1784 n.14 (Fed. Cir. 1992). The
Takahashi reference, as correctly pointed out by the Examiner
(Answer, page 3), discloses a plastic package with a chip
mounted on a bed or paddle of a lead frame. Itaru, on the
other hand, discloses a structure in which the chip bed is
eliminated and the chip is bonded through an insulating film
directly to the top surface of the inner leads. In our view,
these structural teachings are so opposite in approach that
any motivation to combine them must have resulted from an
improper attempt to reconstruct Appellants’ invention in
hindsight. In addition, the Examiner’s attempt to address the
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