Ex Parte HORTALEZA - Page 5




          Appeal No. 2001-1690                                                        
          Application 08/859,407                                                      



          package and performing the undercutting step just prior to                  
          attaching a lid to the package.  See specification, page 6,                 
          line 29 - page 7, line 5.  In other words, the present invention            
          avoids the possibility of damaging particles entering the                   
          undercut wells during transfer of the devices from the tape to              
          the final package by performing the transfer to the final package           
          prior to the undercutting step.  See Specification, page 7, lines           
          5-11.                                                                       


                                     DISCUSSION                                       
                    A prior art reference anticipates a claim when the                
          reference discloses every feature of the claimed invention either           
          explicitly or inherently.  See Hazani v. U.S. Int’l Trade Comm’n,           
          126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361 (Fed. Cir. 1997).                 
                    The principal argument advanced by appellant in                   
          traversing the examiner’s rejection under 35 U.S.C. § 102 is                
          that Mignardi does not teach the claimed step of “mounting the              
          separated partially fabricated devices on a package.”  See Reply            
          Brief, Paper No. 14, received November 17, 2000, pages 2-3.  The            
          examiner appears to take the position that Mignardi’s disclosure            
          of mounting a partially fabricated device onto adhesive tape and            

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