Appeal No. 1998-0338
Application No. 08/350,865
adds slits to reduce the effective width. Furthermore,
Appellant contends, Nishimoto has its own bond pads but does
not have slits there.
It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the reasonable teachings or suggestions
found in the prior art, or by a reasonable inference to the
artisan contained in such teachings or suggestions. In re
Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
In addition, 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). In addition, the
Federal Circuit reasons in Para-Ordnance Mfg. v. SGS Importers
Int’l, Inc., 73 F.3d at 1087-88, 37 USPQ2d at 1239-40, that
for the determination of obviousness, the court must answer
11
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007