Appeal No. 2006-1449
Application No. 10/404,266
The examiner's rejection of independent claims 1, 9, and 17 is therefore
sustained. Since appellants have not separately argued the patentability of dependent
claims 2, 3, 10, 11, 18, 19, 17, 28, 31, 32, 35, and 36, these claims fall with independent
claims 1, 9, and 17. See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528
(Fed. Cir. 1987). See also 37 CFR § 41.37(c)(vii).
Regarding claims 25, 26, 29, 30, 33, and 34, appellants argue that, in addition to
lacking raised pads, Burns does not disclose the various recited claimed limitations by
essentially restating the claim language [brief, page 10]. Appellants further note that the
specification provides the context of how much the pad should be raised (i.e., provide a
pedestal to shorten the distance between the upper area of the pin of the second device
to the bottom side of the PCB [brief, pages 10 and 11]. The examiner responds that
reading such a context from the specification into the claim would impermissibly import
limitations from the specification into the claims [answer, pages 6 and 7].
We will sustain the examiner's rejection of claims 25, 26, 29, 30, 33, and 34.
Regarding claims 26, 30, and 34 (reciting signal traces), apart from merely (1)
reiterating that Burns does not disclose a plurality of raised pads, and (2) restating the
claim language, appellants did not argue with any reasonable specificity how and why
the disclosure of Burns did not anticipate the claims. "A statement which merely points
out what a claim recites will not be considered an argument for separate patentability of
the claim." 37 CFR § 41.37(c)(vii). Nevertheless, we agree with the examiner that the
plated through-holes or vias 48 shown in Fig. 2 of Burns and described on col. 4, lines
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