Ex Parte Li - Page 4


                Appeal No. 2006-2833                                                                         
                Application No. 10/334,807                                                                   


                   I. Whether the Rejection of Claims 10, 11 and 12 Under                                    
                         35 U.S.C. § 102 is proper?                                                          

                      It is our view, after consideration of the record before us, that the                  
                disclosure of McKee et al does not fully meet the invention as recited in claims             
                10, 11 and 12.  Accordingly, we reverse.                                                     
                      It is axiomatic that anticipation of a claim under § 102 can be found only if          
                the prior art reference discloses every element of the claim.  See In re King, 801           
                F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann                            
                Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458,                   
                221 USPQ 481, 485 (Fed. Cir. 1984).                                                          
                      To determine whether claim 10 is anticipated by the references, we will                
                analyze the claim in view of the reference McKee, as indicated in the Examiner’s             
                Answer.  McKee discloses a power shunt for use within a semiconductor device,                
                with the motherboard (in Figure 2, Column 4, lines 3-4) and an integrated circuit            
                package 10 (in Figure 3, with IC die 25) electrically coupled to the motherboard.            
                The package has a spaced portion, between package 10 and the motherboard.                    
                      A capacitor (item 50 in  McKee) is taught to be placed in the spaced                   
                portion for one of the same reasons as mentioned in the reference, namely to                 
                save space on the motherboard or package.                                                    







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