Appeal No. 2003-2014
Application No. 09/757,185
unsuccessful adhesives used in the applied prior art with the
adhesive-filler film composite of Korleski. We agree with the
appellants, however, that neither the applied prior art nor
Korleski whether considered alone or in combination contains any
teaching or suggestion that patentee’s adhesive-filler film
composite would successfully bond a heat sink to an overmold
surface with silicon-containing residue thereon. That is, the
record before us contains no evidence that the adhesive composite
of Korleski would be successful where the adhesives of the
admitted prior art were unsuccessful in the admitted prior art
bonding method.
Significantly, the examiner does not dispute the appellants’
position on this matter. To the contrary, the examiner agrees
that “Korleski is silent toward the film bonding [of] a heat sink
to an overmold with a silicon-containing residue” but stresses
that “ however it is noted that it is unclear how Applicant
overcomes [sic] the weak bond in the admitted prior art caused by
the silicon-containing residue” (answer, page 6; bolding
deleted). The examiner then goes on to state that “Applicant has
shown no unexpected results in using the claimed adhesive to bond
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