Appeal No. 2001-1449 Page 4
Application No. 08/791,177
929, 933 (Fed. Cir. 1984). These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden
is met, the burden then shifts to the applicant to overcome the prima facie case with
argument and/or evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments actually made
by appellants have been considered in this decision. Arguments which appellants could
have made but chose not to make in the brief have not been considered and are
deemed to be waived by appellants [see 37 CFR § 1.192(a)].
We consider first the rejection with respect to claims 20-22, 24-26, 28-30, 35-38
and 41 which stand and fall together as a single group [brief, page 13]. We select
independent claim 20 as the representative claim for this group. With respect to claim
20, the examiner cites Takiar as teaching the mounting of a secondary die on a
primary die. The examiner finds that the secondary die of Takiar alters an electrical
characteristic of the primary die. Although the examiner cites Tsubouchi as teaching
the formation at least one electrical connection between a first contact region of the first
element and a second element back surface contact region, it is not clear why this
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