Ex Parte Dishongh et al - Page 5




              Appeal No. 2004-0620                                                                  Page 5                
              Application No. 09/698,898                                                                                  


              Claims 1 to 3, 5 to 9 and 11 to 13                                                                          
                     In the rejection of claims 1 to 3, 5 to 9 and 11 to 13 under 35 U.S.C. § 103 as                      
              being unpatentable over Farnworth in view of Lin '348 (answer, pp. 4-5), the examiner                       
              (1) set forth that Farnworth discloses a lead (36, Fig. 5b) for attaching an electronic                     
              device (10) to a substrate (40), comprising a first lead portion (38) adapted to abut a                     
              side of the device, and a second lead portion (36) having a first surface adapted to                        
              attach to the substrate and having a second surface opposing the first surface; (2) set                     
              forth that Lin '348 discloses a lead comprising a second lead portion (53, Figure 3)                        
              including an arcuate structure extending from the second lead portion; (3) ascertained1                     
              that Farnworth does not disclose the second lead portion including an arcuate structure                     
              extending from the second lead portion; and (4) concluded that it would have been                           
              obvious to one skilled in the art to modify the second lead portion of Farnworth to                         
              include an arcuate structure extending from the second lead portion to accommodate a                        
              solder ball to improve the electrical connection between the lead and the electrical                        
              contact on the substrate as taught by Lin '348 (column 2, lines 40-45).                                     


                     The appellants argue (brief, pp. 7-10) that the applied prior art does not suggest                   
              the claimed subject matter.  We agree.  In that regard, while Lin '348 does teach an                        

                     1 After the scope and content of the prior art are determined, the differences between the prior art 
              and the claims at issue are to be ascertained.  Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ       
              459, 467 (1966).                                                                                            







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