Ex parte OHNO - Page 5




                Appeal No. 95-4028                                                                                                            
                Application 08/097,904                                                                                                        


                         the timing of testing, the entire focus of one-half of                                                               
                         the Examiner's arguments regarding claim 14, are                                                                     
                         irrelevant to any language found in claim 14 or its                                                                  
                         dependent claims.                                                                                                    
                                 Thus, just as in claim 1, in claim 14, which is                                                              
                         free of the language that confused the Examiner, a                                                                   
                         definitive structural relationship between the end                                                                   
                         surface of the resin package and each testing wire                                                                   
                         conductor is described that exists whether insulating                                                                
                         means or another object covers or electrically                                                                       
                         insulates those second ends of the testing wire                                                                      
                         conductors.  This structural relationship is so plain                                                                
                         and simple that the rejection of the claims as                                                                       
                         indefinite is nearly incredible.                                                                                     
                         When claim 1 is read in light of the application                                                                     
                disclosure,  we agree with the appellant that "even when the2                                                                                                          
                insulating means, the sheet 17 in Figure 3, is in place, the                                                                  
                testing wire conductors are still exposed at the second surface                                                               
                of the circuit board" (Brief, page 6).  On the other hand, the                                                                
                testing wire conductors when covered by the insulating means are                                                              
                not exposed "for testing the respective functions of said                                                                     
                electronic circuit individually" as required by claim 1.  Thus,                                                               
                we agree with the examiner's position that "the testing wires                                                                 
                could not be tested if they were insulated" (Answer, page 5).                                                                 


                         2Any analysis under  112 should begin with a determination                                                          
                of whether the claims do, in fact, set out and circumscribe a                                                                 
                particular area with a reasonable degree of precision and                                                                     
                particularity when read in light of the application disclosure as                                                             
                they would be by one possessing ordinary skill in the art.  See                                                               
                In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).                                                              
                                                                      5                                                                       





Page:  Previous  1  2  3  4  5  6  7  8  Next 

Last modified: November 3, 2007