Appeal No. 2001-0014 Page 12
Application No. 09/070,899
region is present on the silicon chip that may require an
electrical contact or be damaged by unwanted diffusion during
high temperature bonding.
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). It is well settled that
it is the teachings of the prior art taken as a whole which
must provide the motivation or suggestion to combine the
references. Fritch,
972 F.2d at 1266, 23 USPQ2d at 1783-84 (Fed. Cir. 1992) and
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5
USPQ2d 1434, 1438 (Fed. Cir. 1988). As the court in Uniroyal,
837 F.2d at 1051, 5 USPQ2d at 1438 stated, "it is
impermissible to use the claims as a frame and the prior art
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