Appeal No. 1997-4069 Page 10
Application No. 08/282,913
The examiner also fails to allege, let alone show, that
Baerg, Huppenthal, or Hurley remedies the defects of Choi. He
relies on Baerg merely to suggest that “elaborate tests ...
would require exposing the die ....” (Examiner’s Answer at
4.) The examiner relies on Huppenthal only to teach “a wafer
prober that moves the wafers into proper position and probes
are positioned [sic] to physically and electrically contact
the DUT.” (Id. at 5.) He relies on Hurley merely to show “an
emission microscope to detect and localize in-process and use-
related defects in integrated circuits.” (Id. at 7.)
For the foregoing reasons, we are not persuaded that
teachings from the prior art would appear to have suggested
the claimed limitations of testing an IC die while the die is
connected to and exercised by the actual electrical system in
which it is to be used. The examiner impermissibly relies on
the appellant’s teachings or suggestions; he has not
established a prima facie case of obviousness. Therefore, we
reverse the rejections of claims 1-17 under 35 U.S.C. § 103.
Next, and last, we address the obviousness of claims 18-21.
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