Appeal No. 2005-2558
Application No. 10/408,149
similar to those of Gurley, except that the material was a
polyester imide-based resin rather than the epoxy resin claimed
by Gurley. The prior art did acknowledge that epoxy was known
for such use, but viewed epoxy-containing boards as inferior to
polyester-imide-containing boards. On appeal to the Federal
Circuit, Gurley argued that the prior art taught away from his
invention by describing epoxy-containing boards as inferior. The
Court, however, rejected this argument, stating that a “teaching
away” represents only one of a number of factors considered and
weighed in determining obviousness. Stressing the importance of
considering the “teaching away” in context, and according it
appropriate weight, the court held that a known or obvious
material does not become patentable simply because the art
described it as somewhat inferior. Id. In the instant case, we
determine that the teaching that the method “ought to be lead-
free” [emphasis added] is a preferred embodiment, and does not
teach away from using leads.
Next, beginning on page 8 of the answer, the examiner argues
that the bumps on the LGA disclosed in Schar can be considered
leads. Beginning on page 1 of the reply brief, appellants argue
that the bumps cannot be leads as recited in claims 26 and 35.2
2 Appellants also argue extensively this issue on pages 7-12 of the
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