Ex Parte YOU - Page 7




            Appeal No. 2002-0579                                                        Page 7              
            Application No. 09/324,780                                                                      


            and 21-23 do not require that the “filling material that covers the first regions over the      
            attached corresponding chip pads” be non-conductive.  It is well established that               
            limitations not appearing in the claims cannot be relied upon for patentability.  In re Self,   
            671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982).  Moreover, limitations are not to be            
            read into the claims from the specification.  In re Van Geuns, 988 F.2d 1181, 1184, 26          
            USPQ2d 1057, 1059 (Fed. Cir. 1993) citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d             
            1320, 1322 (Fed. Cir. 1989).                                                                    
                   Appellant’s sole argument as to why claims 7, 8, 10 and 21-23 are not                    
            anticipated by Oppermann and claims 11 and 12 are not unpatentable over Oppermann               
            is that Oppermann fails to disclose a filling material which is non-conductive that covers      
            the first regions.  It should be apparent from the above discussion that this argument is       
            not commensurate with the scope of claims 7, 8, 10-12 and 21-23 and thus does not               
            persuade us of any error in the examiner’s rejections of claims 7, 8, 10 and 21-23 as           
            being anticipated by Oppermann and claims 11 and 12 as being unpatentable over                  
            Oppermann.  These rejections are thus sustained.  With respect to the combination of            
            Oppermann and Williams, appellant’s only argument (brief, page 18) is that Williams             
            fails to cure the perceived deficiencies (i.e., failure to disclose non-conductive filling      
            material that covers the first regions) of Oppermann.  In that claim 9 does not require a       
            non-conductive filling material, as discussed above, this argument is not persuasive of         









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