Appeal No. 1997-4038
Application 08/337,550
Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668,
148 USPQ 268, 271-72 (CCPA 1966). Our reviewing court states in In re Piasecki, 745 F.2d at
1472, 223 USPQ at 788, the following:
The Supreme Court in Graham v. John Deere Co., 383 U.S. 1 (1966), focused on
the procedural and evidentiary processes in reaching a conclusion under Section 103.
As adapted to ex parte procedure, Graham is interpreted as continuing to place the "burden of proof on
the Patent Office which requires it to produce the factual basis for its rejection of an application under
section 102 and 103". Citing In re Warner, 379 F.2d 1011, 1016, 154 USPQ 173, 177 (CCPA
1967).
Furthermore, the Federal Circuit states that "[t]he mere fact that the prior art may be modified
in the manner suggested by the Examiner does not make the modification obvious unless the prior art
suggested the desirability of the modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984).
Upon our review of Young, we fail to find that Young suggests to those skilled in the art to
provide the modification proposed by the Examiner. Young fails to contemplate the problem being
solved by the Appellant which is determining the temperature of a discrete power semiconductor device
using an analog integrated circuit that is copackaged with the power semiconductor device on a heat
sink.
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