Appeal No. 2001-1509
Application No. 08/871,890
At page 8 in the “Response to Argument” portion of the
Answer, the Examiner, while agreeing with Appellants’ assertion
that Bhatt discloses only one row of outer flat pads connected to
the outermost conductor pattern, nevertheless suggests the
obviousness to the skilled artisan of employing any number of
rows of outer flat pads. As the basis for this conclusion, the
Examiner contends (id.) that “ . . . it has been held that mere
duplication of the essential working parts of a device involves
only routine skill in the art. St. Regis Paper Co. v Bemis Co.,
193 USPQ 8.” It is our view, however, that the Examiner has
improperly relied on a per se rule of obviousness that merely
adding duplicate additional parts, such as rows of solder pads in
the present factual situation, is not patentable. The issue of
obviousness must always be determined on a case by case basis
considering the specific recitations of the claimed invention and
the specific teachings of the applied prior art.
Further, our review of the disclosure of Bhatt reveals that
it is directed primarily to the structure and placement of
through holes in a printed circuit board. Aside from a drawing
illustration in Bhatt’s Figure 1, we find no disclosure in Bhatt
related to the amount or placement of solder pads for mounting
components. Given this deficiency in the disclosure of Bhatt, we
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