Ex parte AMAGAI et al. - Page 5



               Appeal No. 1997-3306                                                                     
               Application No. 08/234,073                                                               

               there is no disclosure in Ishiwata reporting that the                                    
               patentees recognized that a residue of adhesive adhering to                              
               a chip upon its removal from a radiation cured adhesive                                  
               layer was a problem which subsequently caused defects such                               
               as separation between chips and molding resin in packaged                                
               chips.  Accordingly, one of ordinary skill in the art would                              
               not have experimented to obtain adhesive-free wafer chips,                               
               which experimentation purportedly would have been expected                               
               to yield the claimed “combination and concentration of                                   
               compounds.”                                                                              
               Whereas Ishiwata does not recognize the problems                                         
               caused by adhesive residue adhering to a wafer when it is                                
               removed from a radiation cured adhesive layer as the                                     
               examiner contends, we do not agree with his position at                                  
               page 4, lines 9-15, of the final rejection that a modulus                                
               of elasticity of not less than 1x109 dyne/cm2 is an inherent                             
               property of the adhesive made by the process of Ishiwata.                                
               It is clear from appellants’ disclosure at pages 27-29 that                              
               the lower limit for the modulus of elasticity of the                                     
               radiation polymerizable compound is set to assure that                                   
               diced wafer chips A1-A3 do not fall off the adhesive sheet                               
               1, yet can be removed from the sheet without any residual                                
               adhesive contamination.                                                                  

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