Appeal 2006-1454
Application 09/004,524
Patent 5,483,421
Application '467 minus the limitations of the “glass filled epoxy”
carder material and the requirement that the carrier have a CTE of “at
least 17 X 10-6 ppm/°C.”
(VII). Clearly, in Claims 21 and 34, the Appellants are
attempting to recapture subject matter surrendered by amendment
during the prosecution of Application '467. Specifically, the
Appellants are trying to recapture “a chip carrier formed of an organic
dielectric material” and “a circuit board formed of an organic material
having a coefficient of thermal expansion similar to the chip carrier”
wherein the chip carder is not limited to the glass filled epoxy material
of the patented claims, and the coefficient of thermal expansion of the
chip carrier is not limited to the specified range of values, i.e., at least
17 X 10-6 ppm/°C, of the patented claims.
92. The Examiner then held (see Answer, page 10):
(VIII). The Appellants are thus broadening the patented claims
of Application '467 in two aspects germane to the prior art rejection
(i.e., the glass filled epoxy and CTE of at least 17 X 10-6 ppm/°C of
the chip carrier). These above-cited two aspects were not only
vigorously argued by the Appellants as critical to the patentability of
the claims over the prior art of record, but the Board further supported
and reiterated the Appellants' patentability arguments. Therefore, the
Appellants' Claims 21-25 and 34 of the instant Reissue Application
09/004,524, as broadened vis-a-vis the patented claims of Application
'467, are clearly in violation of the recapture rule under 35 USC § 251
as set forth in the guidelines for determining recapture by the Clement
court (In re Clement, (CAFC) 45 USPQ2d 1161).
(IX). Regardless of whether or not the “encapsulation material”
limitation in reissue Claims 21-25 and 34 is or is not a patentable
feature of the claims, the attempt to recapture the surrendered subject
matter as discussed in paragraph (VII), above . . . requires the
rejection of Claims 21-25 and 34 under 35 USC § 251.
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