Ex Parte GEDNEY et al - Page 52



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

                           coefficient of thermal expansion of at least 17 x 10-6 ppm/C°” has                          
                           been completely left out of these claims;                                                   
                     (2) reissue claims 24 and 25 are broader than the original patent claims in                       
                           that the coefficient of thermal expansion of the chip carrier (i.e., “at                    
                           least 17 x 10-6 ppm/C°”) has been completely left out of these claims;                      
                     (3) the broader aspects of the reissue claims relate to surrendered subject                       
                           matter because “claims 1 and 7, as originally filed in patent                               
                           Application '467 [and cancelled during prosecution], correspond to                          
                           claims 21 and 34, respectively, of the instant Reissue Application                          
                           except that Reissue claims 21 and 34 now each include the limitation                        
                           ‘an encapsulation material encapsulating said first set of solder                           
                           connections’”;                                                                              
                     (4) “this [encapsulation material] limitation was not considered to be                            
                           germane to the prior art rejection given in Application '467” as “[t]his                    
                           feature was taught by several references cited by [the Examiner]                            
                           during prosecution of Application '467”;                                                    
                     (5) “Applicants repeatedly distinguished the amended (patented) claims of                         
                           Application '467 over the prior art by arguing that the prior art fails to                  

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