Appeal No. 2003-0175
Application No. 09/769,976
Discussion
1. Rejection of claims 31, 32 and 36 under 35 U.S.C. § 102(b) as being
anticipated by Kano.
Anticipation requires the disclosure, in a single prior art reference, of each
element of the claims under consideration. See W. L. Gore & Assocs. v. Garlock,
Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
The examiner found that Kano discloses the invention as claimed in claim 31,
with the exception that Kano does not specifically show a “plurality” of structures
corresponding to the claimed solder ball bond pads and wire bond bond pads. See
examiner’s answer, page 5. However, the examiner maintains that it is inherent that
there are a plurality of such pads and coatings. Id.
According to appellant, Kano cannot anticipate the present invention because,
“Kano does not disclose bond pads.” Appeal brief, page 8. Appellant maintains that
Kano’s structures have nothing to do with solder ball bond pads or wire bond bond
pads. Id., page 9. The examiner responds to this argument by noting that the terms
“solder ball bond pad” and “wire bond bond pad” merely define “bond pad one and bond
pad two.” Examiner’s answer, page 7. These terms are merely statements of intended
use and cannot be relied on to patentably distinguish over the prior art. Id.
Where the claimed and prior art structures are identical or substantially identical,
the PTO can require an applicant to prove that the prior art structure does not
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