Ex Parte Berg et al - Page 6




          Appeal No. 2004-1074                                                        
          Application No. 09/924,772                                                  


               To overcome this admitted deficiency, the examiner looks to            
          Okamoto’s disclosure of a noise suppressing electrical connector            
          designed to facilitate automated assembly.  This connector                  
          includes a filter block 1 comprising “a plurality of lead                   
          terminals 2 arranged in parallel, a capacitor array 3 for the               
          lead terminals 2, and an earth metal plate 4, all stacked one               
          upon the other and molded together with an insulating synthetic             
          resin 5” (column 3, lines 7 through 11).                                    
               In proposing to combine Cohen and Okamoto to reject claims 1           
          and 13, the examiner submits that                                           
               it would have been obvious to overmold an insulative                   
               pin holder over the filter assembly 18 of Cohen                        
               (including or not including the insulator 14), as                      
               taught in Okamoto, and as suggested by figures 2-5, 10,                
               and 11 of Cohen.  The suggestion or motivation for                     
               doing so would have been [to] facilitate automated                     
               assembly as taught in Okamoto [answer, page 4].                        
               The test for obviousness is not whether the features of a              
          secondary reference may be bodily incorporated into the structure           
          of the primary reference; nor is it that the claimed invention              
          must be expressly suggested in any one or all of the references.            
          Rather, the test is what the combined teachings of the 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).                



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