Appeal No. 2000-0302
Application No. 08/796,363
"further lowering said capillary tool and pressing said ball
against an electrode
. . ." Contrary to the examiner's statement on page 4 of the
answer, claim 5 does require that the ball be pressed against
the electrode only after it has been separated from the wire,
because this step of the claim recites "further lowering said
capillary tool and pressing said ball against an electrode"
(emphasis added). The term "further" indicates that the step
is performed subsequent to the previously-recited step, and
therefore the antecedent of "said ball" is the ball recited in
the previously-recited step, namely, the ball which was
separated from the wire. By contrast, in the Tiffany method,
the ball 50, when pressed against the electrode (as shown in
Fig. 4), has not yet been separated from the wire 48.
Accordingly, since Tiffany does not expressly or
inherently disclose every limitation of claim 5, the rejection
will not be sustained.
Conclusion
The examiner's decision to reject claim 5 is reversed.
REVERSED
5
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