Ex parte KELLY et al. - Page 5




                Appeal No. 1998-2144                                                                                                       
                Application No. 08/568,847                                                                                                 

                may differ from the prior art (Figure 1) structures on the interior surface of substrate 31                                
                which resemble the “elongate columns” of Figure 3 (i.e., what the improvement over the                                     
                prior art may be with respect to the “contact means”).  If, on the other hand, particular                                  
                interior surface portions of substrate 72 (Figure 3) correspond to the “means,” the question                               
                is raised as to how the particular portions differ from the surface portions in prior art Figure                           
                1.  Finally, the location of the claimed “contact means” is required merely to be “on the                                  
                interior” -- within -- the case, rather than on the interior surface of the case.  Again,                                  
                however, it is unclear what disclosed structure may correspond to such a “contact means.”                                  
                        Although what the disclosed structure may be which corresponds to the “contact                                     
                means” is unclear to us, and neither appellants nor the examiner have explained the                                        
                limitation, there is no rejection under 35 U.S.C. § 112, second paragraph for claim                                        
                indefiniteness.  We therefore presume that the claims pass muster under section 112, and                                   
                leave it to appellants and the examiner to clarify the record.                                                             
                        Turning to the rejection, the examiner offers as evidence of obviousness of the                                    
                claimed subject matter the IBM TDB, which “discloses a module that has a case (1) with                                     
                electrical contacts thereon and contains an integrated circuit chip (2) connected to a circuit                             
                board (4) by the C4 method.”  (Final Rejection, page 2.)  For “columnar means and contact                                  
                means,” the examiner turns to Sumida.  “Sumida teaches a module including a circuit                                        
                board (10) formed of electrically conducting vias (8a-8c) connected to electrical                                          
                connections (1, 2); columnar means formed of additional conductive vias (4a, 4b) for heat                                  

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