Ex parte WIELOCH - Page 4




          Appeal No. 96-3357                                                          
          Application 08/292,491                                                      


               At the outset, we note the fundamental difference between              
          the applied prior art and the invention as interpreted to be                
          claimed.  The invention requires the capability of receiving                
          an electrical package device surface mounted on a mounting                  
          area on a first layer of a multilayer circuit board.  This is               
          clear from Appellant’s statements in the specification and                  
          brief.  Thus, for example, Appellant states that “The mounting              
          layer has a pad configured for the semiconductor device on a                
          first side and a heat sink area for the heat sink on a second               
          side.” [Specification, page 3, lines 20 to 23].  On page 5 of               
          specification, Appellant says that “... circuit board 10                    
          includes a surface mount electrical device 28 mounted on                    
          contact area 22 of board 10 within recess 27.” [Lines 15 to                 
          17].  Again, Appellant clarifies the invention by stating that              
          “More particularly, Appellant provided a multilayer circuit                 
          board having a surface mount pad located in a cavity in the                 
          multilayer circuit board.” [Brief, page 13].  The applied                   
          prior art does not deal with surface mounting.  Nevertheless,               
          we analyze below the rejection of claims 1 through 5 and 23 as              
          presented by the Examiner.                                                  
               We have considered the rejections presented by the                     
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