Appeal No. 2000-0158
Application No. 08/782,872
Inasmuch as neither reference discloses coating the pins
with solder prior to bringing them into contact with the pads, we
cannot sustain the § 103 rejection of any of claims 9-16.
D. New ground or rejection pursuant to 37 CFR § 1.196(b)
Claims 11 and 12 and their dependent claims 15 and 16 are
hereby rejected under 35 U.S.C. § 112, fourth paragraph, for
failing to further restrict claim 9, on which claim 11 depends
directly and claim 12 depends indirectly through claim 10.
Specifically, whereas claim 9 recites that the pins are
"unsecured" to the bond pads and "solderable thereto," claims 11
and 12 specify that each of the pins "is secured to said bond pad
by solder coated on said pin." Consequently, it is possible to
infringe claims 11 and 12 without infringing claim 9, which
violates the "infringement test" for proper claim dependency
discussed in MPEP § 608.01(n) at page 600-77 (8th ed. Aug. 2001),
Ex parte Porter, 25 USPQ2d 1144, 1147 (Bd. Pat. App. & Int.
1992), and Ex parte Moelands, 3 USPQ2d 1474, 1476 (Bd. Pat. App.
& Int. 1987).
E. Appellant's options for responding to new ground of rejection
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by final rule
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