Ex Parte Frank et al - Page 8


               Appeal 2006-3123                                                                             
               Application 10/368,789                                                                       
                      We will reverse the Examiner’s rejection of claim 3 because we agree                  
               with Appellants that Yu fails to disclose a via sufficiency rule that explicitly             
               or inherently defines a via per pad count for one layer of the electronic                    
               design.  While we agree with the Examiner that Yu suggests the limitations                   
               of the claim, we note that our reviewing court has determined that                           
               anticipation requires every element and limitation of the claimed invention                  
               to be found in a single prior art reference, arranged as in the claim. Karsten               
               Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383, 58 USPQ2d 1286,                       
               1291 (Fed. Cir. 2001); Scripps Clinic & Research Foundation v. Genentech,                    
               Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).   In the                   
               instant case, we find that Yu’s Rules 6.1, 6.2, 6.3, 6.4, and 6.5 are silent with            
               respect to a specific via per pad count for one layer of the electronic design.              

                                           Claims 4-6, and 8-10                                             
                      Because dependent claims 4-6 and 8-10 each include the limitations of                 
               claim 3, we will also reverse the Examiner’s rejection of these claims for the               
               same reasons discussed supra with respect to claim 3.                                        

                                                 Claim 16                                                   
                      Appellants argue that Yu fails to disclose determining instances of                   
               power and ground via sufficiency in a package design, as claimed.  In                        
               particular, Appellants argue that Yu does not disclose via sufficiency rules                 
               for a package design (Br. 13).                                                               
                      The Examiner disagrees (Answer 5).  See the Examiner’s response for                   
               claim 1, supra.                                                                              


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