Appeal No. 2004-2296
Application No. 10/017,031
remainder of the claim. The preamble of a claim does not limit the scope of the claim
when it merely states a purpose or intended use of the invention. In re Paulsen, 30
F.3d 1475, 1479, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
To the extent that the term “packaged” may limit the scope of instant claim 1,
appellant has not shown that the examiner’s position with respect to the breadth of the
term is erroneous. We agree with the examiner that the chips described by Mauritz are
necessarily, in normal use, enclosed within a structure, and thus may fairly be
considered “packaged” within the meaning of instant claim 1. Appellant has not shown
otherwise, either by probative evidence or persuasive argument as to why the
examiner’s position might be thought incorrect.
We thus sustain the § 102 rejection of claim 1 over Mauritz. We also sustain the
§ 102 rejection of claim 18, as appellant has neglected to explain why the examiner
should be deemed as having erred in the finding of anticipation with respect to Mauritz.
Claims 1-24 are rejected under 35 U.S.C. § 103 as being unpatentable over
Haba, Mauritz, Hsuan, and Kim. Appellant groups the claims into three separate groups
represented by independent claims 1, 10, and 18, respectively, which we also select as
representative in this appeal. See 37 CFR § 1.192(c)(7) (1997).
The § 103 rejection of claims 1 and 18 could be sustained in view of Mauritz
alone, as appellant has not shown error in the rejection for anticipation. A claim that is
anticipated is also obvious under 35 U.S.C. § 103; anticipation is the epitome of
obviousness. See, e.g., Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220
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