Appeal No. 1997-0552
Application No. 08/267,490
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by appellants and the examiner. As a consequence of our
review, we make the determinations which follow.
While we agree with the examiner that Lappington provides a strong motivation to
incorporate semiconductor programming functionality into the manufacturing or assembly
environment, the examiner has not addressed the language of the claims to which the
rejection is addressed. Appellants argue that the claimed invention is directed to a
different invention than is Lappington.
Appellants repeatedly argue that the claimed invention is directed to the automatic
programming, testing, marking and mounting of a semiconductor in a manufacturing area.
(See brief at page 5, 8, 9 and 10.) We agree with appellants. The examiner has not
addressed the automatic nature of the claimed invention. While we find the limitation
containing the term “automatic” only in the last step involving the mounting, the claim
recites that the semiconductor is conveyed between the steps and that the programming
head is "receiving and retaining" the semiconductor. In light of the specification and the
combination of conveying of the semiconductor with the receipt and retention of the
semiconductor, the claimed process and apparatus are automatic rather than manual. We
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