Ex parte CLEMENTE - Page 5




               Appeal No. 1997-4038                                                                                               
               Application 08/337,550                                                                                             


               fact that a certain thing may result from a given set of circumstances is not sufficient."  Id. at 1269, 20        

               USPQ2d at 1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981).                           

                      Upon a close inspection of Young, we find that Young teaches determining the temperature of a               

               semiconductor device junction shown as a diode 11 in figure 1.  We further find that Young does not                

               teach or even contemplate that the analog circuits shown in figure 1 would be copackaged with the                  

               semiconductor device, diode 11.  Therefore, we fail to find that the Examiner established inherency                

               because from the teachings of Young the missing descriptive matter is not necessarily present in                   

               theYoung temperature monitoring apparatus.  Therefore, we find that Young does not inherently teach                

               determining the temperature of the analog integrated circuit as recited in Appellant's claims, nor does            

               Young inherently teach using the 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.             

                      We are not inclined to dispense with proof by evidence when the proposition at issue is not                 

               supported by a teaching in a prior art reference or shown to be common knowledge of unquestionable                 

               demonstration.  Our reviewing court requires this evidence in order to establish a prima facie case.  In           

               re Piasecki,  745 F.2d 1468, 1471-72,  223 USPQ 785, 787-88 (Fed. Cir. 1984);  In re Knapp-                        


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