Appeal 2007-1363
Application 10/637,419
claims 1 and 21 on appeal (“approximately one-half” falls within the
claimed ranges of “approximately 0% to approximately 75%” and
“approximately 33% to approximately 75%”). The argument that Raiser
fails to disclose or teach any “relationship” between the amount of underfill
material 26 and the height of fillet 38 (Br. 11) is irrelevant since Raiser
describes an example which falls within the claimed range.
For the foregoing reasons and those stated in the Brief, we affirm the
rejection of claims 1, 3-5, 7-10, 21, and 23-31 under § 102(e) over Raiser.
B. The Rejection over § 103(a)
As previously noted, Appellants do not present any additional reasons
for the patentability of claims 2 and 22 (Br. 17). Therefore, we adopt the
factual findings and conclusion of law as stated by the Examiner (Answer 5
and 14). We additionally note the law is replete with cases in which the
difference between the claimed invention and the prior art is some range or
other variable within the claims. These cases have consistently held that in
such a situation Appellants must show that the particular variable is critical,
which in this appeal Appellants have not done. See In re Woodruff, 919 F.2d
1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
C. Other Issues
In the event of further or continuing prosecution of the claimed
subject matter, the Examiner and Appellants should determine if the “related
art” as disclosed in the Specification is actually “prior art” capable of
supporting a rejection of the claims. We note that the “related art” in
Appellants’ Specification uses a very low epoxy fillet height in the range of
less than 33.33% , although examples show low values such as 25% and
high values such as 90% (Specification 2:16-18; 3:23-24; and Figures 5-12
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