Ex Parte Sumikawa et al - Page 6



          Appeal No. 2006-1341                                                        
          Application No. 09/782,180                                                  

               We now turn to the rejection of claims 5-8 and 18 over                 
          Tamaki.  As set forth by the examiner, the back surface of                  
          Tamaki’s semiconductor wafer 4a is polished to a mirror finish              
          and is coated with a reinforcing resist material 33.  For some              
          reason appellants’ arguments in the principal and reply briefs              
          focus upon adhesive 31 for reinforcing plate 21, but appellants             
          fail to explain why resin layer 33 of Tamaki, cited by the                  
          examiner, fails to meet the claim 5 recitation of “applying resin           
          on said surface abrased.”                                                   
               Appellants also maintain that “claim 5 distinguishes over              
          the reference [Tamaki] because claim 5 abrases to a mirror                  
          finish” (page 10 of principal brief, penultimate paragraph).                
          However, appellants have not refuted the examiner’s reasonable              
          position that the step of “grinding to a mirror finish is                   
          equivalent to abrasing” (page 11 of answer, first sentence).                
          Also, we agree with the examiner that one of ordinary skill in              
          the art would have understood that the functional device 3 of               
          Tamaki can be the claimed external connection electrode.  In                
          addition, appellants have not rebutted the examiner’s finding               
          that “metal layer 5 is an electrical connection for the                     
          semiconductor package” (page 11 of answer, third paragraph).                

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