Appeal No. 2000-0421 Application 08/912,429 responds that Bond [column 7, lines 45-49] teaches that the thermal conductor can also be used as an electrical conductor [answer, pages 11-12]. Appellants respond that a ground path is not a signal path [reply brief, page 3]. We will also sustain this rejection. We agree with the examiner that the solder balls 80' located under thermal conductor 72 also function as second electrical interconnections underlying a shadow region of the integrated circuit chip as pointed out by the examiner. The argument that a ground path is not a signal path is not understood as noted above. Accordingly, Bond clearly anticipates the invention recited in claims 1, 2, 5, 6, 9, 10, 13 and 14. We now consider the rejection of all claims under 35 U.S.C. § 103. In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the examiner is expected to make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why one having ordinary skill in the pertinent art would have been led to modify the prior art or to combine prior art references to arrive -6-Page: Previous 1 2 3 4 5 6 7 8 9 10 11 NextLast modified: November 3, 2007