Ex parte WAKI et al. - Page 3




          Appeal No. 2000-0302                                                        
          Application No. 08/796,363                                                  


          relative to the wire until it contacts the new ball 50, and                 
          then further lowered with the ball until the ball contacts                  
          electrode 56, as shown in Figs. 3 to 5 (col. 2, line 70, to                 
          col. 3, line 5).  Thereafter, the tool is returned to its                   
          upper position (Fig. 2), the wire is cut by the burner, and                 
          the cycle is repeated (col. 3, lines 15 to 20).                             
               "To anticipate a claim, a prior art reference must                     
          disclose every limitation of the claimed invention, either                  
          explicitly or inherently."  In re Schreiber, 128 F.3d 1473,                 
          1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).  Appellants argue              
          that Tiffany does not disclose the claimed step of "separating              
          said ball from said wire by lowering said capillary tool                    
          relative to said wire" (emphasis added).  The examiner asserts              
          that this step is disclosed at col. 3, lines 16 to 18 of                    
          Tiffany (answer, page 5).                                                   
               The paragraph from which the portion of Tiffany cited by               
          the examiner is taken reads (col. 3, lines 15 to 20):                       
                    When the welding is completed (the ball 50 is                     
                    firmly bonded to the wafer) the quill 24 may be                   
                    returned to the position shown in Fig. 2, and                     
                    the cycle may be repeated by severing the wire                    
                    by the flame cutter 60 to both cut the wire and                   
                    form a new ball to be deposited on the next                       

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