Ex parte WAITL et al. - Page 5




               Appeal No. 1999-0598                                                                                                 
               Application No. 08/866,064                                                                                           

               “finished solder terminals not requiring further length change and which run alongside                               
               and laterally project outwardly from opposite sidewalls of the housing and extending                                 
               vertically downward to a position level with a planar mounting surface (the edge portion at                          
               38a) of the bottom of the housing and having unbent ends” [answer-page 3].                                           
                       The examiner takes issue with the claimed term, “a width of the planar mounting                              
               surface being greater than a thickness of the solder terminals,” taking the view that “a”                            
               width can be any portion of the total width of the mounting surface and “a” thickness can be                         
               any portion of the total thickness of the solder terminals.  Therefore, concludes the                                
               examiner, this limitation is “inherent” in Ishizaki.                                                                 
                       The examiner dismisses the claimed limitation of the lead frame parts being                                  
               “punched parts” as a “process limitation” not further limiting the product.  The examiner                            
               also dismisses the failure of Ishizaki to teach solder terminals which “can be” soldered to                          
               the printed circuit board at a top surface thereof because this is an “intended use” which                           
               does not result in a structural difference between the claimed apparatus and the apparatus                           
               of Ishizaki.                                                                                                         
                       The examiner employs Stokes for a teaching of the functional and mechanical                                  
               equivalency of through hole terminals and joints, and butt terminals and joints and                                  







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