Appeal No. 1997-4038
Application 08/337,550
"using said heat sink temperature, the power dissipated in the power semiconductor device, the
temperature of the analog integrated circuit and the thermal resistances between the power
semiconductor device and the analog integrated circuit, between the power semiconductor device and
the heat sink, and between the analog integrated circuit and the heat sink to determine the temperature
of the discrete power semiconductor device," as recited in Appellant's claims.
On page 4 of the answer, the Examiner acknowledges that Young does not disclose a
copackaged power semiconductor and analog circuit, nor does Young explicitly state the thermal
resistances needed to determine temperature. The Examiner seems to reason that if one of ordinary
skill in the art were to copackage a power semiconductor and analog circuit that the method and
apparatus as claimed by the Appellant would have been inherent.
"Inherency and obviousness are distinct concepts." W.L. Gore & Associates, Inc. v.
Garlock, Inc., 721 F.2d 1540, 220 USPQ 303, 314 (Fed. Cir. 1983) citing In re Spormann, 363
F.2d 444, 448, 150 USPQ 449, 452 (CCPA 1966). Furthermore, "[t]o establish inherency, the
extrinsic evidence 'must make clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of ordinary skill.'" In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) citing Continental
Can Co v. Monsanto Co., 948 F.3d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
"Inherency, however, may not be established by probabilities or possibilities. The mere
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