Appeal No. 1997-1248
Application 08/480,109
suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification.” In re Fitch, 972 F.2d 1260, 1266 n.14, 23
USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re
Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). “Obviousness may not be established using hindsight or
in view of the teachings or
suggestions of the inventor.” Para-Ordnance Mfg. V. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239 (Fed. Cir.
1995), citing W. Lish. Gore & Assocs., v. Garlock, Inc., 721
F.2d at 1553, 220 USPQ at 312-13 (Fed. Cir. 1983).
We take the independent claim 9 as representative claim.
The Examiner asserts [answer, page 3] that Satou shows “layers
7 and 8 substantially formed as a frustrum [sic] cone.” The
Examiner further contends [id.] that “[i]t would have been
obvious ... to melt the solder ball by heating to some degree
in order to form a contact, thereby the solder ball would bead
away from the non-wettable layer... .”
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