Appeal No. 2003-1331
Application 09/301,889
unpatentable over the combination of Millican and Lin, as applied to appealed claims 1 and 23,
and further in combination with Andricacos et al.1,2
In order to establish a prima facie case of obviousness, the examiner must show that some
objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in this art would have led that person to
the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellants’ disclosure. See generally, In re Rouffet, 149 F.3d 1350,
1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics,
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Fine, 837 F.2d 1071, 1074-76,
5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473,
5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988).
The dispositive issue with respect to all grounds of rejection in this appeal involves the
interpretation to be made of the language of appealed independent claims 1 and 23. Appellants
submit that the claimed method “flattens solder bumps,” and thus does not encompass the
method of Lin (brief, page 7; see also pages 3 and 5). The examiner contends that the scope of
the claims “is not so limited,” but does not state how the claims are to be interpreted in light of
the specification in order to encompass the method of Lin (answer, page 8; see also pages 4-5).
We find that, when considered in light of the written description in the specification as
interpreted by one of ordinary skill in this art, see, e.g., In re Hyatt, 211 F.3d 1367, 1372,
54 USPQ2d 1664, 1667 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997), In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989), the plain language of appealed independent claim 1, on which appealed claims 5 and
8 through 11 depend, specifies a method for testing IC chips with probe needles on flat solder
bumps comprising at least the steps of, inter alia, first forming solder bumps, which have a
1 Claims 2, 6, 7, 12 through 20, 22 and 24 are also of record and have been withdrawn from
consideration by the examiner under 37 CFR § 1.142(b). Claims 1, 2, 5 through 20 and 22
through 24 are all of the pending claims. A correct copy of appealed claims 1, 5, 8 through 11
and 23 is in the appendix to the brief.
2 Answer, pages 4-7.
- 2 -
Page: Previous 1 2 3 4 Next
Last modified: November 3, 2007