Appeal No. 1997-4415
Application 08/469,990
diffusion technique on an organic chip carrier substrate. The
Examiner argues that Nakao teaches that chip mount type
packages and Tape Automated Bonding (TAB) packages are
equivalent structures shown in the art wherein one of ordinary
skill in the art routinely designs for both. The Examiner
argues because the two chip mounting arrangements were art
recognized equivalents at the time the invention was made, one
of ordinary skill in the art would have found it obvious to
substitute TAB mounting for the chip mounting type package
shown by Minetti. The Examiner further argues that the claim
is a product-by-process claim and that the process of making
the product need not be given patentable weight.
As pointed out by our reviewing court, we must first
determine the scope of the claim, "[T]he name of the game is
the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998). In In re Thope, 777 F.2d 695,
597, 227 USPQ 964, 966 (Fed. Cir. 1985), our reviewing court
also states "[i]f the product in a product-by-process claim is
the same as or obvious from a product of the prior art, the
claim is unpatent-able even though the prior product was made
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