Ex Parte Butler - Page 9



              Appeal 2007-0053                                                                                           
              Application 10/225,829                                                                                     
              delivering surface mount electronic components such as memory chips, integrated                            
              circuit chips, resistors, connectors, microprocessors, capacitors, gate arrays, and                        
              the like (Finding of Fact 3).  One having ordinary skill in the art at the time of the                     
              invention, possessed with the carrier tape design of Bird and the knowledge of how                         
              to avoid bending stresses at the portion of the tape containing the electronic                             
              components, as taught in Yanagisawa, and facing the problem of improving the                               
              handling characteristics of component-bearing tapes, would have been motivated                             
              to add the low-bending-resistance portions of Yanagisawa to the carrier tape of                            
              Bird to avoid damage to the component parts as the tape is wound about a reel, as                          
              suggested in Yanagisawa.                                                                                   
                     We reject Appellant’s assertion that Bird “teaches away” from including any                         
              additional apertures in the strip portion of the carrier tape because doing so would                       
              undesirably weaken the tape.   Although Bird discusses that removal of material                            
              for the component openings and advancement holes reduces the inherent strength                             
              of the strip portion, Bird teaches that one practicing the invention must use a                            
              polymeric foam having a sufficient tensile strength to compensate for the reduced                          
              strength resulting from the removed material.  Rather than discouraging the                                
              removal of material from the strip portion, Bird teaches compensating for the                              
              openings and holes by selecting the appropriate polymeric foam (Finding of Fact                            
              5).                                                                                                        
                     We further reject Appellant’s assertion that one skilled in the art would have                      
              no reasonable expectation of success when modifying the carrier tape of Bird with                          
              the weakened portions of Yanagisawa.  To the contrary, we find that there is a high                        

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