Ex parte EZAWA et al. - Page 12




               Appeal No. 1997-0166                                                                                                    
               Application No. 08/409,933                                                                                              


                       Turning now to claim 8, which depends from claim independent claim 17, and claims 18 and 22                     

               which depend from claims 17 and 21, respectively, as appellants have not specifically argued the                        

               limitations of these claims, the rejection of claims 8, 18 and 22 under 35 U.S.C. § 103 is also affirmed.               

                       Turning now to claims 9 and 19 which depend from claim 17, and claim 23 which depends                           

               from claim 21, appellants assert that the references do not suggest that the thickness of the resin film (6)            

               is within a range of 4-5µm (claim 9), or about  4-5µm (claims 19 and 23).  The examiner’s position                      

               (answer, page 3) is that it would have been an obvious matter of design choice as a mere change in size                 

               of a component.  Appellants' position (reply brief, pages 10 and 11) is that the references “lack                       

               disclosure or suggestion of the recited resin film and its thickness. Even if film 5 disclosed in Yabe could            

               be considered hypothetically to be resin film, there is no suggestion or motivation for modifying film 5 to             

               have a thickness such as that recited” [1st and 3rd emphasis added].  At the outset, we note that                       

               appellants disclose film (6) to be  a “polyimide resin” (specification, page 11).  In Yabe (translation,                

               pages 2, 4 and 5) the first surface protection film (5) is a “polyimide film” which we find to be a “resin              

               film” as is appellants' film (6).                                                                                       

                       Turning to the issue of the 4-5 µm thickness of the resin film (6), as stated supra, Yabe                       

               discloses (translation, page 2) that conventionally, the polyimide film was 2-5µm in thickness, but that                

               this led to shorting due to the TAB lead and the chip end coming into contact. Yabe’s improvement                       


               1966).                                                                                                                  
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