Appeal No. 1998-2144
Application No. 08/568,847
Each of independent claims 21 and 36 require, inter alia, “a module that has a case
with electrical contacts thereon and contains an integrated circuit chip and a circuit board
therein which circuit board and chip have electrical connections on facing surfaces
thereof...and which board has electrically conducting vias therein for the conduction of
electricity to and from...connections to the electrical contacts.” Independent claim 31
recites similar limitations, although using the language “component board” and “facing front
1
side surfaces.” While such structure is clearly shown in appellants’ prior art Figure 1
(consistent with the implied admission related to the Jepson format), we do not see how
the basic structures of the claims are disclosed or suggested by the IBM TDB and
2
Sumida. The examiner refers to substrate 4 of the IBM TDB as the “circuit board,” but no
module having a case with electrical contacts thereon is disclosed; how the provision of
“electrically conducting vias” within the circuit board for conducting electricity to contacts
would have been suggested is problematic, in view of no contacts being disclosed.
Sumida fails to remedy the basic deficiencies in the rejection.
Perhaps the problem with the rejection lies in erroneous claim interpretation. In
general, the preamble of an apparatus claim may be entitled to little patentable weight if
1We note in passing that the claim 31 recitation “the metal contacts” lacks proper antecedent in
the claim, but apparently refers to the “electrical contacts” on the case.
2There is nothing in the statement of the rejection to suggest that appellants’ admitted prior art is
relied upon as part of the evidence of alleged obviousness, nor is any rationale supplied for why the
combined teachings of the admitted prior art and the applied references would have rendered the claimed
subject matter obvious.
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