Appeal No. 2000-2294
Application No. 08/511,425
As indicated by the cases just cited, the Examiner has at
least two responsibilities in setting forth a rejection under
35 U.S.C. § 103. First, the Examiner must identify all the
differences between the claimed invention and the teachings of
the prior art. Second, the Examiner must explain why the
identified differences would have been the result of an
obvious modification of the prior art. In our view, the
Examiner has not properly addressed his first responsibility
so that it is impossible that he has successfully fulfilled
his second responsibility.
With respect to the appealed independent claims 59, 62,
and 69, the Examiner has never attempted to show how each of
the claimed limitations is suggested by the teachings of the
applied prior art. Instead, the Examiner has taken the
position (Answer, page 9) that Appellants’ invention basically
consists of three elements, a test wafer, an interconnect
media, and a product wafer. To this basic combination of
elements, the Examiner has added bits and pieces from various
secondary references to address such features as temperature
control and blocking circuitry. Nowhere, however, does the
Examiner address the specific language of the claims. For
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