Ex Parte Jiang et al - Page 4



          Appeal No. 2004-2144                                                        
          Application No. 09/483,712                                                  
          portions of the die, the dielectric element, the conductive                 
          traces, the bond members and the carrier bonds (id.).  The                  
          examiner recognizes that Farnworth discloses all of the claimed             
          elements except the discrete conductive bond connecting the                 
          conductive trace to the bond pad (id.).  Therefore the examiner             
          applies Lee to show a similar chip-size package1 in which a                 
          conductive trace is spaced from a bond pad, with a discrete                 
          conductive bond in the form of a wire connecting the conductive             
          trace to a bond pad formed on the surface of a semiconductor chip           
          (id.).2  From these findings, the examiner concludes that it                
          would have been obvious to one of ordinary skill in the art at              
          the time the invention was made to employ the discrete conductive           
               1                                                                      
               1In the event of further or continuing prosecution of this             
          application, the examiner and appellants should consider whether            
          Lee alone discloses structures meeting the claimed limitations              
          (i.e., see Figures 9-11).                                                   
               2                                                                      
               2The examiner states that the use of discrete electrical               
          bonds (lead or bond wires) was “notoriously well known” in the              
          art, as evidenced by appellants’ Figure 1 which is listed as                
          “Prior Art” (Answer, page 5).  We also note that Figure 1 of Lee            
          is labeled as “PRIOR ART” and contains bond wires 80 connecting             
          bonding pad 74 to lead 76.  It is axiomatic that admitted prior             
          art in an applicant’s specification may be used in determining              
          the patentability of a claimed invention (In re Nomiya, 509 F.2d            
          566, 570-71, 184 USPQ 607, 611-12 (CCPA 1975); and that                     
          consideration of the prior art cited by the examiner may include            
          consideration of the admitted prior art found in an applicant’s             
          specification (In re Davis, 305 F.2d 501, 503, 134 USPQ 256, 258            
          (CCPA 1962); cf., In re Hedges, 783 F.2d 1038, 1039-40, 228 USPQ            
          685, 686 (Fed. Cir. 1986)).                                                 
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