Ex Parte Inaba

Board of Patent Appeals and Interferences

Sep 9, 2004

09772985 (B.P.A.I. Sep. 9, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

Paper No. 25

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TETSUYA INABA
__________

Appeal No. 2004-2040
Application No. 09/772,985
___________

ON BRIEF
___________

Before PAK, DELMENDO, and JEFFREY T. SMITH, Administrative
Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2003) from the examiner’s final rejection of claims 27 through
30 (final Office action mailed May 20, 2003, paper 18), which
are all of the claims pending in the above-identified
application.
The subject matter on appeal relates to a method of
producing an electronic device (e.g., a multi-chip module).
(Specification, page 1, line 5 to page 8, line 8.) Further
Appeal No. 2004-2040
Application No. 09/772,985

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details of this appealed subject matter are recited in
representative claim 27, the only independent claim on appeal,
reproduced below:
27. A method of producing an electronic device,
comprising the steps of:
providing a flexible board having a first surface
and an opposite second surface with connection lands
provided on the first surface;
mounting at least two chips on the first surface
of the flexible board and at least two chips on the
second surface of the flexible board;
dispensing an adhesive made of an insulating
material on one of the at least two chips mounted on
the first surface of the flexible board to cover the
one chip;
folding the flexible board into a first sidewise
U-shaped configuration so that the one chip covered by
the adhesive faces the other chip mounted on the first
surface of the flexible board with the flexible board
being sufficiently folded and an amount of the
dispensed adhesive covering the one chip mounted on
the first surface of the flexible board being
sufficient so that the other chip mounted on the first
surface of the flexible board is immersed in the
adhesive resulting in completely covering both chips
mounted on the first surface of the flexible board
with the dispensed adhesive contacting facially-
opposing first surface mounting areas of the first
surface of the flexible board surrounding the
respective chips mounted on the first surface of the
flexible board;
dispensing the adhesive one [sic] of the at least
two chips mounted on the second surface of the
flexible board to cover the one chip;
folding the flexible board into a second sidewise
U-shaped configuration to form a S-shaped flexible
board so that the one chip mounted on the second
surface of the flexible board and covered by the
adhesive faces the other chip mounted on the second
surface of the flexible board with the flexible board
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Application No. 09/772,985

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being sufficiently folded and an amount of the
dispensed adhesive covering the one chip mounted on
the second surface of the flexible board being
sufficient so that the other chip mounted on the
second surface of the flexible board is immersed in
the adhesive resulting in completely covering both
chips mounted on the second surface of the flexible
board with the dispensed adhesive contacting facially-
opposing second surface mounting areas of the second
surface of the flexible board surrounding the
respective chips mounted on the second surface of the
flexible board;
providing a base board having base board
connection lands formed on one surface thereof; and
connecting the connection lands of the flexible
board to the base board connection lands.

The examiner relies on the following prior art reference as
evidence of unpatentability:
Paurus et al. (Paurus) 5,448,511 Sep. 5, 1995
Claims 27 through 30 on appeal stand rejected under 35
U.S.C. § 102(b) as anticipated by Paurus. (Examiner’s answer
mailed Nov. 18, 2003, paper 23, pages 3-5.)
We reverse.
“‘To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either
explicitly or inherently.’” MEHL/Biophile Int’l Corp. v.
Milgraum, 192 F.3d 1362, 1365, 52 USPQ2d 1303, 1305 (Fed. Cir.
1999)(quoting In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997)).
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Application No. 09/772,985

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As method steps, appealed claim 27 recites in part:
dispensing an adhesive made of an insulating
material on one of the at least two chips mounted on
the first surface of the flexible board to cover the
one chip;
folding the flexible board into a first sidewise
U-shaped configuration so that the one chip covered by
the adhesive faces the other chip mounted on the first
surface of the flexible board with the flexible board
being sufficiently folded and an amount of the
dispensed adhesive covering the one chip mounted on
the first surface of the flexible board being
sufficient so that the other chip mounted on the first
surface of the flexible board is immersed in the
adhesive resulting in completely covering both chips
mounted on the first surface of the flexible board
with the dispensed adhesive contacting facially-
opposing first surface mounting areas of the first
surface of the flexible board surrounding the
respective chips mounted on the first surface of the
flexible board...[Emphasis added.]

The appealed claim further recites:
dispensing the adhesive one [sic] of the at least
two chips mounted on the second surface of the
flexible board to cover the one chip;
folding the flexible board into a second sidewise
U-shaped configuration to form a S-shaped flexible
board so that the one chip mounted on the second
surface of the flexible board and covered by the
adhesive faces the other chip mounted on the second
surface of the flexible board with the flexible board
being sufficiently folded and an amount of the
dispensed adhesive covering the one chip mounted on
the second surface of the flexible board being
sufficient so that the other chip mounted on the
second surface of the flexible board is immersed in
the adhesive resulting in completely covering both
chips mounted on the second surface of the flexible
board with the dispensed adhesive contacting facially-
opposing second surface mounting areas of the second
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Application No. 09/772,985

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surface of the flexible board surrounding the
respective chips mounted on the second surface of the
flexible board...[Emphasis added.]

Thus, for each of the recited first and second surfaces of the
flexible board, a specified adhesive dispensing step is followed
by a specified folding step.
According to the examiner (answer at 3-4), one skilled in
the art would have “[d]ispensed an adhesive made of an
insulating material to cover the chips in an encapsulating
arrangement” and “[f]olded the flexible board in first and
second U shaped configurations to form a S shaped board so that
the one chip covered by the adhesive faces the other chip
mounted on the second surface of the flexible board...” To
support this contention, the examiner relies on the disclosures
in Paurus at: column 3, lines 35-37; column 4, lines 24-28 and
39; column 5, lines 28-31; and column 6, lines 28-31. (Answer
at 4.)
We cannot agree with the examiner’s analysis. The relied
upon portions of Paurus do not describe the dispensing of an
adhesive followed by the folding of the flexible board for each
of the first and second surfaces of the flexible board, as
required by appealed claim 27. Instead, Paurus teaches
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Application No. 09/772,985

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stabilizing the folded stack with an adhesive. (Column 7, lines
14-17; Figure 10.)
It is clear, therefore, that the examiner has not
adequately established that Paurus describes each and every
limitation of the invention recited in appealed claim 27.
Accordingly, we are constrained to reverse the examiner’s
rejection on this ground.1
For these reasons, we reverse the examiner’s rejection
under 35 U.S.C. § 102(b) of appealed claims 27 through 30 as
anticipated by Paurus.

1 Upon receipt of this application, the appellant and the
examiner should analyze whether any of the appealed claims
should be rejected under 35 U.S.C. § 103(a) as unpatentable over
Paurus.
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Application No. 09/772,985

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The decision of the examiner is reversed.
REVERSED

Chung K. Pak )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Romulo H. Delmendo )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Jeffrey T. Smith )
Administrative Patent Judge )

RHD/kis
Appeal No. 2004-2040
Application No. 09/772,985

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