Ex parte UESUGI et al. - Page 9




          Appeal No. 1998-2800                                       Page 9           
          Application No. 08/572,505                                                  


          at page 25 of appellants' specification.  Also, note at least               
          the Fujikawa reference of record.                                           
               The patentability of appellants' claims do not appear to               
          have been fully considered by the examiner with respect to the              
          admitted prior art being utilized as the "primary reference"                
          in light of the above-noted case law which alone may suggest                
          the prima facie obviousness of making the admitted prior art                
          batch process continuous.  Of course, the examiner should also              
          consider the admitted prior art together with other references              
          that are of record or otherwise known to the examiner that may              
          likewise suggest such a modification of the admitted prior art              
          method.  In addition, the references directed to the formation              
          of a matting layer should be considered together therewith to               
          determine whether the provision of a matting layer forming                  
          step as part of the admitted prior art process of making a                  
          lead-frame would have been obvious to one of ordinary skill in              
          the art.                                                                    
               Moreover, the secondary evidence of record should be                   
          reconsidered by the examiner to determine whether or not that               
          evidence is sufficient to outweigh the evidence of obviousness              
          that may be relied upon by the examiner in contemplating such               







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