Ex parte LAFONTAINE et al. - Page 5

          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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