Appeal No. 2001-0684
Application No. 09/205,668
electrically floating. (See brief at page 4.) We agree with appellants. The examiner
argues that the limitation would be to a method of use of the pad in a device and would
not carry patentable weight. (See answer at page 5.) While this may be a reasonable
interpretation of the claim, it does not make the two claims inconsistent, in our view.
Therefore, we will not sustain the rejection of claim 6 under 35 U.S.C. § 112.
With respect to claim 11, the examiner maintains that the third contact is
redundant. (See answer at pages 3 and 5.) Appellants argue that nothing in claim 1
requires the limitations as set forth in dependent claim 11. (See brief at page 5.) We
agree with appellants. While claim 1 recites “extending into said electrically insulating
region,” this would not necessarily require “a third contact portion extending through
said insulating region” as recited in claim 11. Therefore, we do not find the limitation
redundant as maintained by the examiner, and we will not sustain the rejection under
35 U.S.C. § 112.
35 U.S.C. § 103
With respect to independent claim 1, appellants argue that the combination of
Wollesen and Chittipeddi does not teach or suggest the limitation of claim 1 concerning
“said protection structure contacting and extending downward from portions of the pad
region that are not directly above said electronic component, said protection structure
including a peripheral portion extending around a predominant part of the central
portion of the electrically insulating region.” (See brief at page 6.) We agree with
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