Appeal No. 2002-0934
Application No. 09/392,276
The Examiner’s assertion that the device of figure 1 is suitable for routing
power supply voltages through the substrate appears to have been derived from
Appellants’ specification. The Examiner has not identified a basis in the prior art
and the admitted art to modify the semiconductor device of figure 1 to use 0.2
micron technology in the manner proposed by the Examiner. The Examiner’s
statement “that nowadays it is well known in the art to use 0.2 micron technology
for semiconductor devices, of which official notice is taken” does not provide
motivation for modifying the device of figure 1 to meet the requirements of claims 1
and 9. The Examiner has not refered to any evidence that teaches or suggests the
connection of a power supply to the back side of a semiconductor device that uses
0.2 micron technology.1 The mere fact that the prior art could be modified would
not have made the modification obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984); In re Laskowski, 871 F.2d 115, 117, 10 USPQ2d 1397, 1398
(Fed. Cir. 1989). The record indicates that the motivation relied upon by the
Examiner suggesting the combination of APA, Tran and Hshieh came from the
Appellants’ description of their invention in the specification rather than from the
1 Contrary to the Examiner’s assertion in the Answer, we find no unequivocal
admission on the part of the Appellants at pages 7 and 8 of the specification.
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