Appeal No. 2002-0899
Application No.09/609,652
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 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).
With respect to independent claim 25, the Examiner, as the
basis for the obviousness rejection, proposes to modify the
integrated electronic device disclosure of Wilcox. As recognized
by the Examiner, Wilcox discloses first and second electrodes 10
constructed of the same material (“such as copper,” Wilcox,
column 3, line 31) and, therefore, lacks a teaching of an
electronic device in which the first and second electrodes are
made of different materials as claimed. To address this
deficiency, the Examiner turns to Kim which, at column 1, lines
20-35, discloses a prior art bonding process in which elements
are bonded to an aluminum electrode. According to the Examiner
(Answer, page 4) the skilled artisan would have been motivated
and found it obvious to substitute Kim’s aluminum electrode for
the first electrode of Wilcox “... because it would provide a
chip electrode.” The Examiner further asserts (id.) that “... it
has been held that the selection of a known material based on its
suitability for its intended use is prima facie obvious.”
-5–5
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