Appeal No. 2003-0272
Application No. 09/478,497
the Reply Brief (Paper No. 16) for appellants’ position with respect to the claims which
stand rejected.
OPINION
The 35 U.S.C. § 103 rejection of claims 7-10 (Answer at 3-4) asserts that the
combined teachings of Peterson and Bardsley show prima facie obviousness of the
claimed subject matter as a whole. The examiner finds that Peterson discloses the
“essential elements” of the claimed invention, but fails to disclose attaching a replica
component to circuit pads which extend about the edge of the circuit pattern. The
rejection turns to Bardsley for disclosure of attaching a “replica component” (Fig. 3; 34)
to circuit pads (Fig. 3; 54).
Appellants argue (Brief at 7) that the Bardsley reference is directed to a process
for chip in-place testing, having no relationship to using replica components in
measuring the effects of a manufacturing process on a circuit board. The examiner
responds (Answer at 6) that the term “replica component” could represent nothing more
than a commercially available, off-the-shelf electronic component. In addition, the
examiner appears to advance an additional theory in arguments on pages 7 through 10
of the Answer. The “wave soldering” taught by Peterson, with reference to column 1,
lines 9 through 20, is deemed to read on the claimed “attaching a replica component to
circuit pads.” Appellants respond (Reply Brief at 4), in turn, that the meaning of the
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