Appeal No. 1997-0166
Application No. 08/409,933
to the height of the bump electrode to prevent the short circuit that occurs during the manufacturing
process if the TAB lead and chip come into contact. While Yabe’s reasons for setting the thickness of
the resin film with respect to the height of the bump electrode are not identical to those of appellant,
Yabe achieves the same results as appellants as Yabe sets forth that the polyimide film (5) has a
thickness of +0 ~ -10 µm with respect to the height of the bump electrode. Moreover, we note firstly,
that as a general proposition, as long as some suggestion to combine the teachings of the references is
provided by the prior art as a whole, the law does not require that the references be combined for the
identical reasons contemplated by the inventor. See In re Dillon, id. at 1901. Secondly, we note that
we are not relying upon Yabe’s teachings of resin film thickness with respect to the height of the bump
electrode as a basis for combining the teachings of Yabe with the other references, as the other
references to Merrin and Engeler are relied upon in the rejection for different issues.
The examiner also relies upon Engeler for a teaching that the metal layer contains Pd, Ni and
Ti. However, we note that independent claims 17 and 21 do not contain this limitation. We therefore
consider this reference to be surplusage with respect to the rejection of claims 17 and 21. Accordingly,
the rejection of claims 17 and 21 under 35 U.S.C. § 103 as being unpatentable over Yabe in view of
Merrin and Engeler is affirmed . 2
2Even though we sustain the examiner’s rejection of claims 8, 17, 18, 21 and 22 under 35 U.S.C. § 103 for
additional reasons than that advanced by the examiner, our position is still based on the collective teachings of the
references applied in the examiner’s answer, and does not constitute a new ground of rejection. See In re Bush, 296
F.2d 491, 496, 131 USPQ 263, 267 (CCPA 1961); See In re Boyer, 363 F.2d 455, 458 n.2, 150 USPQ 441, 444 n.2 (CCPA
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