Appeal No. 2005-0181
Application No. 09/781,631
Claim 48 is directed to the toughness property. As
discussed, supra, we affirmed the rejection of this claim under
35 U.S.C. § 112, second paragraph (indefiniteness). As such, the
metes and bounds of appealed claim 48 is unclear and indefinite
to the extent that it is impossible to ascertain the propriety of
the grounds of rejection of appealed claim 48 under 35 U.S.C.
§ 102(e)/103 over Tang. See In re Wilson, 424 F.2d 1382, 1385,
165 USPQ 494, 496 (CCPA 1970); In re Steele, 305 F.2d 859, 862-
63, 134 USPQ 292, 295-96 (CCPA 1962). We therefore reverse the
instant rejection of claim 48, pro forma.
With regard to claim 54, claim 54 depends upon claim 52.
Claim 52 is directed to a method of encapsulating with an
encapsulant composition of the kind recited in claim 31. Hence,
as discussed supra, because Tang teaches the same composition as
claimed in claim 31, the recited properties of claim 54 are met
by the composition of Tang. See our discussion regarding claims
31 and 32, supra.
With regard to claim 52, claim 52 is a method of
encapsulating an integrated circuit chip and organic substrate
comprising the steps that include re-flowing solder joints
between the integrated circuit chip and the substrate. Appellant
argues that Tang does not recite a method of reflowing the solder
joints between integrated circuit chip and the substrate.
Brief, pages 9 and 10.
In response, on page 12 of the answer, the examiner states
that method claims 52-70 would have been obvious in view of Tang
“in view of the fact that there are conventional steps of
encapsulating, and that Tang teaches using the composition as an
encapsulate.” The examiner refers to the Background of the
Invention of Tang. The examiner correctly points out that
to the paragraph bridging pages 9-10 of the brief in this regard.
-12-
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007