Appeal No. 2002-0934
Application No. 09/392,276
0.2 micron technology and to connect the first power supply conductor
to the back side of the die in order to remove the need for “flying
leads”, as taught by Tran et al., in order to reduce the space required
for wiring and to be able to use only one lead and one pin for the
electrical connection (column 3, lines 33-40). The combination is
motivated by the teachings of Tran et al. who point out the advantages
of coupling a first power supply conductor to the back side of the die.
[Answer, pages 4-6].
To hold an invention obvious in view of a combination of references, there
must be some suggestion, motivation, or teaching in the prior art that would have
led a person of ordinary skill in the art to select the references and combine them in
the way that would produce the claimed invention. See, e.g., Heidelberger
Druckmaschinen AG v. Hantscho Commercial Prods., Inc., 21 F.3d 1068, 1072,
30 USPQ2d 1377, 1379 (Fed. Cir. 1994) (When the patent invention is made by
combining known components to achieve a new system, the prior art must provide a
suggestion, or motivation to make such a combination.); Northern Telecom v.
Datapoint Corp., 908 F.2d 931, 934, 15 USPQ2d 1321, 1323 (Fed. Cir. 1990) (It is
insufficient that the prior art disclosed the components of the patented device, either
separately or used in other combinations; there must be some teaching, suggestion,
or incentive to make the combination made by the inventor.); Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1044, 1051, 5 USPQ 1434, 1438 (Fed. Cir.
1988).
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