Ex parte SUPPELSA et al. - Page 6




               Appeal No. 1998-3045                                                                                               
               Application 08/612,693                                                                                             

               on the periphery of the carrier as insurance against defective or mistakenly removed                               
               resistors (Abstract).  According to Neumann, having terminating resistors directly on circuit                      
               boards is wasteful of circuit board space (Background of the Invention).  If the examiner                          
               considers entire terminating resistors on chip carriers as trim pads, no explanation has                           
               been given to justify such an interpretation.  The appellants’ specification appears to                            
               regard a “trim pad” as an element apart from the circuit pattern on the substrate (spec. at                        
               2, lines 25-29).  Moreover, Neumann’s resistors are not on the bottom side of a substrate                          
               where C5 solder bumps are located and on the top side of which exists a circuit pattern as                         
               the appellants have claimed.          Tanaka’s invention is directed to a circuit board                            
               including disk-shaped resistors on one surface thereof.  Tanaka does state that the                                
               resistors can be arranged at arbitrary positions on the board (column 1, lines 20-23), but if                      
               read in context the language indicates that the arbitrary positions are all located on the                         
               same side of the board.  Note that in column 1, lines 8-11, Tanaka states: “In conventional                        
               circuit boards, resistors are formed on an upper surface of the board by . . . .” (Emphasis                        
               added).  In column 1, lines 17-19, where problems with the prior art is described, Tanaka                          
               states:  “a resistor cannot be formed at an arbitrary position on the surface of the board”                        
               (Emphasis added).  Furthermore, as is the case with Neumann, the examiner has offered                              
               no explanation for apparently regarding resistors which are a part of the circuit pattern as a                     
               “trim pad” in the context of the appellants’ claimed invention.                                                    
                      For the foregoing reasons, the examiner has failed to establish a sufficient factual                        

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