Ex Parte DAILEY et al - Page 5



          Appeal No. 2001-0249                                                        
          Application No. 08/786,494                                                  

          the examiner’s position that Livshits discloses the claimed                 
          subject matter but for the provision of reduced interfacial shear           
          stresses.  However, the examiner finds that this would be                   
          “inherently” provided by the circuit board of Livshits.                     
               The instant claimed invention recites that the compliant               
          adhesive layer comprises a “low modulus material” and that it is            
          the combination of the selected low modulus material and the                
          height of the interconnect regions (defined as being between a              
          first major surface of a top layer of a laminate substrate and a            
          second major surface of a bottom layer of the substrate and                 
          having a predetermined height) which provides for the claimed               
          “reduced interfacial shear stresses.”                                       
               There is nothing “inherent” about selecting the right                  
          combinations of two variables (low modulus material and height of           
          interconnect regions) so as to result in reduced interfacial                
          shear stresses in a multi-layer printed circuit board and we find           
          nothing within the disclosure of Livshits that would have                   
          indicated the selection of such variables for such a purpose.               
               Accordingly, the examiner’s reasoning falls far short of               
          providing a prima facie showing of anticipation of the instant              
          claimed subject matter and we will not sustain the rejection of             
          claims 17, 18, 21, 22, 25, 26 and 31-34 under 35 U.S.C. 102(b).             
                                         -5–                                          




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