Ex parte QUINN et al. - Page 5




          Appeal No. 1997-3727                                                        
          Application 08/416,127                                                      


          that the Examiner has not shown this “inherency” of the                     
          lateral force.  The only force we find, in Sugimoto, being                  
          applied to the chip is by element 7 and that force is                       
          perpendicular to the substrate.  We cannot speculate as to                  
          what other prior art may exist to meet claim 1.  However, we                
          are persuaded by Appellants that Sugimoto does not anticipate               
          claim 1.                                                                    
               Rejections under 35 U.S.C.  103                                       
               Claims 3 to 5 are rejected as being obvious over Sugimoto              
          and Suda.                                                                   
               As a general proposition in an appeal involving a                      
          rejection under 35 U.S.C.  103, an Examiner is under a burden              
          to make out a prima facie case of obviousness.  If that burden              
          is met, the burden of going forward then shifts to the                      
          applicant to overcome the prima facie case with argument                    
          and/or evidence.  Obviousness is then determined on the basis               
          of the evidence as a whole and the relative persuasiveness of               
          the arguments.  See In re Oetiker, 977 F.2d 1443, 1445, 24                  
          USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d                  
          1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re                       


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