Ex Parte GEDNEY et al - Page 17



              Appeal 2006-1454                                                                                         
              Application 09/004,524                                                                                   
              Patent 5,483,421                                                                                         

                     64. On September 20, 1993, the Examiner entered an Advisory Action                                
              indicating that claims 1, 2, 4-8, and 10-14 remained rejected under 35 U.S.C. § 103                      
              over AAPA, Ushifusa, and Ogihara.                                                                        
                     65. On September 30, 1993, applicants filed a Notice of Appeal.                                   
                     66. On December 2, 1993, applicants filed an Appeal Brief (“the Brief”).                          
                     67. In the Brief at page 5, applicants argued:                                                    
                     Specifically, it is applicants’ position that there is nothing in the cited                       
                     art that teaches the use of a glass-filled organic chip carrier having a                          
                     coefficient of thermal expansion of at least 17 × 10-6 ppm/°C on which                            
                     an integrated circuit chip is mounted by means of solder ball                                     
                     technology and wherein the chip carrier is mounted to a circuit board                             
                     having a similar coefficient of thermal expansion also by means of                                
                     solder ball technology.                                                                           
                     68. Applicants further argued at pages 10-11 of the Brief:                                        
                     Glass filled epoxy circuit boards are known as admitted by applicants.                            
                     Rather, the question is: Is there anything in the art that would lead one                         
                     to select an organic material having this coefficient of thermal                                  
                     expansion as a chip carrier, mount an I/C chip onto this type of carrier                          
                     with solder ball connections, encapsulate the solder balls connections                            
                     and then mount this carrier to a circuit board having a coefficient of                            
                     thermal expansion similar to that of the chip carrier?  When viewed in                            
                     this light, there is no suggestion or motivation found in the references.                         
                     69. On June 14, 1995, a panel (“the panel”) of the Board of Patent                                
              Appeals and Interferences (“the BPAI”) entered an decision reversing the decision                        
              of the Examiner rejecting claims 1, 2, 4-8, and 10-14 under 35 U.S.C. § 103.                             

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