Ex Parte ASAI et al - Page 6



          Appeal No. 2001-1509                                                         
          Application No. 08/871,890                                                   

          Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.               
          Cir. 1984).  These showings by the Examiner are an essential part            
          of complying with the burden of presenting a prima facie case of             
          obviousness.  Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d             
          1443, 1444 (Fed. Cir. 1992).                                                 
               With respect to the Examiner’s 35 U.S.C. § 103(a) rejection             
          of appealed claim 5, the sole independent claim on appeal, based             
          on the combination of JP ‘767 and Bhatt, Appellants assert that              
          the Examiner has failed to establish a prima facie case of                   
          obviousness since all of the claimed limitations are not taught              
          or suggested by the applied prior art references.  In particular,            
          Appellants contend (Brief, pages 11 and 12; Reply Brief, pages 4-            
          6) that the Bhatt reference, relied upon by the Examiner for                 
          teaching the claimed solder pad arrangement, does not meet the               
          requirements of claim 5.  Appellants assert that, in contrast to             
          the language of claim 5 which requires that the outer layer pad              
          group include solder pads “ . . . in at least two and up to five             
          rows from an outer position of the solder pad group . . . , ”                
          Bhatt discloses only one row of solder pads that have flat pads              
          connected to the outermost conductor pattern 21.                             



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