Appeal 2007-1772
Application 10/672,750
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also
In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983)
(“[I]t is not necessary that the inventions of the references be physically
combinable to render obvious the invention under review.”); and In re
Nievelt, 482 F.2d 965, 968, 179 USPQ 224, 226 (CCPA 1973) (“Combining
the teachings of references does not involve an ability to combine their
specific structures.”).
It follows that, on this record, we shall affirm the Examiner’s
obviousness rejection of claims 45, 47-49, 63, and 65-67 over Pai in view of
Huang.
Our disposition of the Examiners rejection of claims 35 and 37-39
over Pai in view of Huang is another matter. This is because all of these
claims require that the substrate is coupled to one of the semiconductor die
by an adhesive different from the adhesive coupling the semi-conductor die
to each other. The substrate coupling adhesive is required to be curable at a
temperature that is lower than the cure temperature of an adhesive that is
used for coupling the semiconductor die together. The Examiner maintains
that this argued claim feature respecting the different adhesives relates to a
product-by–process limitation that is given no patentable weight. (Answer
4-5). However, this claim feature relates to a property of the adhesives used
in the claimed product, not just a method of making the product. The
Examiner has not otherwise furnished a rationale explanation for the
proposed rejection of the claims requiring this feature. In this regard, the
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