Appeal No. 1998-0096
Application No. 08/518,182
The 35 U.S.C. § 103(a) Rejection of Claim 12
Based on the Combination of Fujimoto and Saito (JP4-30532), or
in the Alternative, the Combination Fujimoto,
Saito (JP4-6841) and Saito (JP4-30532)
Claim 12, which depends from claim 7, further recites “a
conductive adhesive between said composite bumps and said
substrate input/output pads” (emphasis added).
Fujimoto and Saito (JP 4-6841), taken alone or in
combination, do not teach or suggest such a limitation. In
rejecting claim 12, the examiner has relied on Saito (JP4-
30532) to provide such a deficiency of Fujimoto and Saito
(JP4-6841); however, he has not met his burden of establishing
a prima facie case of obviousness. Saito (JP4-30532) teaches
that conductive adhesive 7 is provided between substrate bumps
6 and integrated circuit element 1 (Translation, pages 5-6),
not between composite bumps and substrate input/output pads as
claimed. The mere fact, however, that the prior art could be
modified in the manner suggested by the examiner would not
have made the modification obvious unless the prior art
suggested the desirability of the modification. In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Fujimoto does not need any conductive adhesive between the
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