Ex Parte GEDNEY et al - Page 22



              Appeal 2006-1454                                                                                         
              Application 09/004,524                                                                                   
              Patent 5,483,421                                                                                         

                            (2) Second, applicants amended rejected independent claim 7 to                             
              add the requirement of “an encapsulation material encapsulating said first set of                        
              solder connections”.                                                                                     
                     83. The Examiner reasoned as follows (see Final Office Action entered                             
              March 2, 2000, pages 3-4):                                                                               
                            Claims 21-23 and 34 are broader than the original patent claims                            
                     by the following two limitations: (1) the requirement that the material                           
                     of the chip carrier is a “glass filled epoxy” has not been included in                            
                     these claims; and (2) the requirement of “said chip carrier having a                              
                     coefficient of thermal expansion of at least 17 x 10-6 ppm/C°” has                                
                     been completely left out of these claims.                                                         
                            Claims 24 and 25 are broader than the original patent claims in                            
                     that the coefficient of thermal expansion of the chip carrier (i.e., “at                          
                     least 17 x 10-6 ppm/C°”) has been completely left out of these claims.                            
                            It is the position of the present Examiner that the Applicants’                            
                     Claims 21-25 and 34 are drawn to an invention surrendered during the                              
                     prosecution in order to obtain allowance of the original patent claims.                           
                     The Examiner draws attention to the original claims presented in US                               
                     5,483,421. Claims 1 and 7, as originally filed in patent Application                              
                     '467, correspond to Claims 21 and 34, respectively, of the instant                                
                     Reissue Application except that Reissue Claims 21 and 34 now each                                 
                     include the limitation “an encapsulation material encapsulating said                              
                     first set of solder connections.” However, this limitation was not                                
                     considered to be germane to the prior art rejection given in                                      
                     Application '467. This feature was taught by several references cited                             
                     by Examiner Sparks during prosecution of Application '467.                                        




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