Ex parte TSUKAGOSHI et al. - Page 5




          Appeal No. 1998-0786                                                        
          Application No. 08/464,118                                                  


               As evidence of obviousness of the claimed subject matter               
          under 35 U.S.C. § 103, the examiner relies on the combined                  
          disclosures of Hatada, Breen, Fujiwara, Pallie, Bentov and                  
          Celling.  See Answer in its entirety.  According to the                     
          examiner, Hatada essentially shows the claimed process except               
          for the claimed adhesive composition and its application on a               
          wafer prior to cutting it into chips.  Id.  The examiner then               
          relies on the disclosures of Fujiwara, Pallie, Bentov and                   
          Celling to establish obviousness of using the claimed adhesive              
          composition and the disclosure of Breen to establish                        
          obviousness of applying the claimed adhesive composition on                 
          the wafer prior to cutting it into chips.  See Answer, pages                
          6-9.  In addition, the examiner takes the position that “these              
          metal projections/bumps of [Hatada] are held/seen to                        
          correspond/be essentially identical to the “deformable                      
          projecting electrodes” recited/envisioned for use by                        
          appellants...”  See Answer, page 8.                                         
               Under 35 U.S.C. § 103, “the examiner bears the initial                 
          burden, on review of the prior art or on any other ground, of               
          presenting a prima facie case of unpatentability.”  In re                   


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