Ex parte OHNO - Page 4




          Appeal No. 95-4028                                                          
          Application 08/097,904                                                      


          the claims are indefinite because "the testing wires could not be           
          tested if they were insulated" (Answer, page 5).                            
               With respect to claim 1, appellant argues (Brief, pages 5              
          and 6) that:                                                                
               There is no limitation in claim 1 as to when the                       
               testing takes place nor as to when the insulating means                
               covers and electrically insulates the second ends of                   
               the testing wire conductors.  Moreover, there is no                    
               requirement in claim 1 that the testing wire conductors                
               be exposed generally in the completed IC card.  Rather,                
               claim 1 only requires that the testing wire conductors                 
               be exposed at the second surface of the circuit board.                 
               As plainly apparent from the embodiment of the                         
               invention shown in Figure 3, even when the insulating                  
               means, the sheet 17 in Figure 3, is in place, the                      
               testing wire conductors are still exposed at the second                
               surface of the circuit board.  Thus, no inconsistency                  
               can be found in the language of independent claim 1.                   
               Appellant additionally argues (Reply Brief, pages 3 and 4)             
          that:                                                                       
               It matters not whether insulating means or any other                   
               object is present and covers the second surface of the                 
               circuit board or the second ends of the testing wire                   
               conductors because, in any event, those second ends of                 
               the testing wire conductors are still present, i.e.,                   
               exposed at, the second surface of the circuit board.                   
          With respect to claim 14, appellant argues (Reply Brief, page 4)            
          that:                                                                       
                    The Examiner's arguments make it appear that claim                
               14 also includes the "for testing" language of claim 1.                
               It does not.  All that claim 14 requires is that each                  
               testing wire conductor be exposed at an end of a resin                 
               package, just as they are shown in Figures 9 and 11 of                 
               the application.  Testing using those conductors and                   
                                          4                                           





Page:  Previous  1  2  3  4  5  6  7  8  Next 

Last modified: November 3, 2007