Appeal No. 1996-2956
Application 08/152,192
in view of the teachings or suggestions of the invention."
Para-Ordnance Mfg. v. SGS Importers Int'l, 73 F.3d at 1087, 37
USPQ2d at 1239, citing W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13. In
addition, our reviewing court requires the PTO to make
specific findings on a suggestion to combine prior art
references. In re Dembiczak, 175 F.3d 994, 1000-01, 50
USPQ2d 1614, 1617-19 (Fed. Cir. 1999).
Upon our review of the references cited by the Examiner,
we fail to find that the Examiner has made specific findings
on a suggestion to combine these prior art references. In
particular, we fail to find that the Examiner has shown that
the prior art suggests automating transportation of unenclosed
ICPUs from one treatment or test station to another station.
In addition, the Examiner has failed to show that the prior
art teaches or suggests the integration of treatment and test
stations for testing, marking, sorting and packing ICPUs of
different categories without the need to package and repackage
ICPUs before separate individual process operations are
performed.
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