Appeal No. 2005-0001
Application No. 09/268,902
established a prima facie case on obviousness. Our reviewing court stated in
Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433, that when making an
obviousness rejection based on combination, “there must be some motivation,
suggestion or teaching of the desirability of making the specific combination that
was made by Applicant” (quoting In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d
1635, 1637 (Fed. Cir. 1998)) “The motivation, suggestion or teaching may come
explicitly from statements in the prior art, the knowledge of one of ordinary skill in
the art, or, in some cases the nature of the problem to be solved.” In re Huston
308 F.3d 1267, 1278, 64 USPQ2d 1801, 1810 (Fed. Cir. 2002, citing In re
Kotzab 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000). The
examiner has asserted that the motivation to combine stems from the need for a
Mitsuhashi’s system to know the physical dimensions of the integrated circuit.
Further, we find that the nature of the problem to be solved in Mitsuhashi, to
perform a current analysis for the power source wiring, involves analyzing the
flow of current within the wire segments of the integrated circuit. As stated supra
we find that Mitsuhashi teaches that this is performed concurrent with the layout
of the integrated circuit. One of ordinary skill in the art would recognize that the
current enters and exits the chip through bond pads and as such to analyze the
current within the wires extending to the bond pads would also require knowledge
of the location of the bond pads for power and ground. We find that the nature of
the problem to be solved in Huddleston is to find the optimal position of the bond
pads, and that this to be performed in support of the layout of the integrated
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