Ex Parte MAHLE et al - Page 4



          Appeal No. 2001-0687                                                        
          Application No. 09/080,070                                                  

          reference teaching the coating of the balls after attachment to             
          the package, there is no teaching in any of the references                  
          relating “to the coating of the balls and the leads after                   
          securing the balls to the leads.  In other words, the claims                
          require securing of the balls to the leads and then coating of              
          the balls and the leads in a single step.”                                  
               While the simultaneous coating of the leads and the balls              
          after the balls are secured to the package may not be taught by             
          the references, contrary to what appellants’ argument may                   
          indicate, instant claim 1 does not require the coating of the               
          balls and the leads “in a single step.”  Rather, the claim                  
          requires, after providing the partially fabricated package, “then           
          coating said leads and said balls with palladium.”  While this              
          claim language certainly requires the coating of both the leads             
          and the balls with a palladium coating, it does not require that            
          the coating be performed in a single step.  Therefore, we need              
          not address the obviousness of coating these elements in a single           
          step because such is not a limitation of the claim and                      
          appellants’ argument is not commensurate in scope with the claim            
          language.                                                                   
               Since the applied references, in combination, clearly                  
          suggest coating the leads and the balls, after securing the balls           

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