Appeal No. 2003-0273 Page 5
Application No. 09/863,664
The Rejection Under Section 103
Claims 24-32 stand rejected as being obvious in view of Goss. The test for
obviousness is what the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of obviousness, it is
incumbent upon the examiner to provide a reason why one of ordinary skill in the art
would have been led to modify a prior art reference or to combine reference teachings to
arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App.
& Int. 1985). To this end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the knowledge generally
available to one of ordinary skill in the art and not from the appellant's disclosure. See,
for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d
1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
Claim 24 recites a load beam having a predetermined thickness, and requires the
steps of having a conductor define a locus of electrical contact along an extent of the
load beam rigid portion, providing a microchip extending “through”1 the rigid portion
predetermined thickness, and electrically connecting the microchip to the conductor at
the electrical locus. In the Goss device, although opening 51 in the base portion is
1The common applicable definitions of “through” are “from one end or side to the other,” and
“extending from one surface to another.” See, for example, Webster’s new Collegiate Dictionary, 1973,
page 1217.
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