Appeal No. 94-3121
Application 07/853,868
burden of establishing a prima facie case of obviousness by showing some objective teachings or
suggestions in the prior art taken as a whole or that knowledge generally available to one of
ordinary skill in the art would have led that person to combine the relevant teachings of the
references in the proposed manner to arrive at the claimed invention without recourse to the
teachings in appellant’s disclosure. See generally In re Fine, 837 F.2d 1071, 1074-1076, 5
USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chemical, 837 F.2d 469, 473, 5 USPQ2d
1529, 1531-32 (Fed. Cir. 1988); In re Warner, 379 F.2d 1011, 1014-17, 154 USPQ 173, 176-78
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968). We cannot conclude that the examiner has
carried his burden in the case before us.
Representative appealed claim 1 specifies a process in which a film formed from an
adhesive comprising a liquid epoxy of specified purity, a solid resin having a functional group and
a microencapsulated curing agent is interposed between opposing circuits to be connected, one of
which has projecting electrodes,
wherein the adhesive is removed from the contact areas of the projecting electrodes and
opposing circuits due to lowering in viscosity of the adhesive and is substantially cured
after the projecting electrodes have been contacted with the opposing circuits by
applying heat and pressure at the time of connection with heating at 70 to 200°C for 60
seconds or less under a pressure of 1 kgf/cm2 or less per one electrode.[3]
In construing this claim, it is clear to us that one of ordinary skill in this art would clearly have
determined from appellants’ specification that heat within the recited range is applied for a period
of “60 seconds or less” under the specified pressure after contact has been made between the
opposing circuits which removes the adhesives from the contact areas and substantially cures the
2 See, e.g., amendment of February 16, 1993 (Paper No. 16).
3 We have reproduced here the copy of a portion of appealed claim 1 as it appears in the
appendix to appellants’ main brief, which is apparently the manner in which claim 1 was intended
to be amended and is consistent with the amendment to claim 14 in the amendment of February
23, 1993 (Paper No. 17) and as claim 14 appears in the appendix to appellants’ main brief. It
appears from the record that in the amendment of February 23, 1993, that appellants directed that
the phrase “per one electrode” be inserted “after ‘less’” in line 24 of claim 1. The word “less”
appears twice in this line of claim 1 as “Three Times Amended” in the amendment of February 16,
1993 (Paper No. 16). The amendment to claim 1 was entered after the first appearing “less” so
that line 24 of claim 1 of record reads “for 60 seconds or less per one electrode under a pressure
of 1 kgf/cm2 or less.” While the position of the phrase in claim 1 has no bearing on our decision,
appellants should correct the claim upon any prosecution of this case.
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