Appeal No. 2001-1912
Application No. 08/803,392
Okanobu discloses in Figure 1 and the paragraph bridging pages 8 and 9 that
the elements making up the transmitting and receiving apparatus -- except for
bandpass filter 3 and the oscillating coil of voltage controlled oscillator VCO311 -- may
be formed in a single IC. However, the examiner concludes that it would have been
obvious to have integrated all elements into a single IC. The conclusion relies on the
finding that forming in one piece an article which has formerly been formed in two
pieces and put together involves only routine skill in the art, referring to “Howard v.
Detroit Stove Works, 150 U.S. 164 (1893).” (Answer at 5.)
In appellants’ view (Brief at 13-14), a functional communication device cannot be
designed by simply selecting components and integrating them onto a single IC chip.
Appellants’ arguments are consistent with the instant specification (e.g., pp. 10-16),
which describes appellants’ modifications to prior art versions of radio receivers and
transmitters such that required elements may be fabricated on a single chip.
Our reviewing court looks with disfavor on per se rules of obviousness. See,
e.g., In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995)
(“[R]eliance on per se rules of obviousness is legally incorrect and must cease.”). While
we might agree with the examiner to the extent that forming articles in one piece may
be considered obvious in certain simple mechanical arts, we do not consider the rule of
obviousness to extend to fabrication of circuit elements in semiconductor packages, in
view of appellants’ arguments, appellants’ disclosure, and the teachings of Okanobu.
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