Ex Parte Cobbley et al - Page 10

                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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