Appeal No. 2003-1021
Application 09/507,507
device for reliably mounting the device on
the component and also provides suitably high
thermal conductivity properties for rapidly
withdrawing heat from the semiconductor
device.
Column 5, lines 32-39.
Accordingly, the rejection under 35 U.S.C. § 102(b) is
reversed.
3. Rejection of claims 2-4, 8, 10-13 and 15 under
35 U.S.C. § 103 as unpatentable over Gondusky
According to the examiner, Gondusky discloses the
features of claims 2-4, 8, 10-13 and 15 with the exception of the
specifically claimed values and materials. Examiner’s Answer,
page 5. The examiner maintains that it would have been obvious
to one of ordinary skill in the art at the time of the invention
to have selected the claimed materials since it is within the
skill of the worker in the art to select a known material on the
basis of its suitability for an intended use as a matter of
obvious design choice. Id. The examiner further maintains that
the specifically claimed values are “obvious design expedients.”
Id.
As discussed above in connection with claim 1, from
which claims 2-4 and 8 depend, Gondusky fails to teach a discrete
8
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