Appeal No. 2004-1412
Application 09/818,686
that thermally conductive metal used to plate surfaces can include “copper, but may be any other
thermally conductive” material (col. 2, line 66, to col. 3, line 4). Miyagi discloses that suitable
plating materials include copper and nickel (e.g., col. 5, lines 45-47). Christopher further teaches
that solder forms heat radiating patterns and thus is thermally conductive (e.g., col. 4), and we
take notice that it is well known that tin is a component of solder generally.
Accordingly, prima facie, one of ordinary skill in this art routinely following the
combined teachings of Christopher and Miyagi would have reasonably arrived at printed wiring
boards that have a plated layer as a heat radiating element of the thermally conductive path which
contains nickel or tin as required by appealed claims 16 through 18 without recourse to
appellant’s specification. See Dow Chem., supra; Keller, supra.
In view of the prima facie case of obviousness under § 103 established over the combined
teachings of Christopher and Miyagi, the burden of going forward has shifted to appellant to
submit argument and/or evidence in rebuttal. See generally, In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984).
We have considered appellant’s arguments in the brief and reply brief with respect to
whether they pertain to the new ground of rejection of all of the appealed claims which we explain
above. We acknowledged above the difference that appellant identified between the claimed
invention encompassed by the appealed claims and the disclosure of Christopher in addition to the
difference identified by the examiner. However, appellant has not otherwise addressed the issues
that we raise above with respect to the combined teachings of Christopher and Miyagi.
Accordingly, the burden of going forward with respect to this ground of rejection remains
with appellant. See Piasecki, supra.
This decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b)(2003).
37 CFR § 1.196(b) provides that, “A new ground of rejection shall not be considered final for
purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE
DATE OF THE DECISION, must exercise one of the following two options with respect to the
new ground of rejection to avoid termination of proceedings (§ 1.197(c)) as to the rejected
claims:
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