Ex parte JUNTWAIT et al. - Page 5




               Appeal No. 97-2619                                                                                                    
               Application 08/104,461                                                                                                


               to render obvious a claimed invention, there must be some reason for the combination other than                       

               hindsight gleaned from appellants’ disclosure.  Interconnect Planning Corp. v. Feil, 774 F.2d 1132,                   

               1143, 227 USPQ 543, 551 (Fed. Cir. 1985).  In the fact situation before us, we are unable to agree                    

               with the examiner that one of ordinary skill in the art would have been motivated by the teachings of                 

               Beyer to incorporate oval crimps in the connectors of Bruni or Shindo for terminating the insulating                  

               jackets of the wires in the manner called for in claim 1.                                                             

                       In light of the foregoing, we will not sustain the §103 rejection of claim 1, or claims 2-4 and 6-9           

               that depend therefrom, as being unpatentable over Bruni or Shindo in view of Beyer.                                   

                       As to the examiner’s second rejection, we have carefully reviewed the Berg and Piscitelli                     

               references additionally relied upon and find nothing therein that makes up for the deficiencies of Bruni,             

               Shindo and Beyer noted above.  Hence, we also will not sustain the § 103 rejection of claims 5-9 as                   

               being unpatentable over Bruni or Shindo in view of Beyer, and further in view of Berg or Piscitelli.                  

                       Under the provisions of 37 CFR § 1.196(b), we enter the following new rejections.                             

                       Claims 1-4 are rejected under 35 U.S.C. § 103 as being unpatentable over the Japanese                         

               publication to Nishijo (cited by appellants in the Information Disclosure Statement filed June 26, 1997)              

               in view of Shindo.                                                                                                    

                       Nishijo, Figures 3-8, discloses a wire contact assembly comprising an insulated wire 2 including              

               a conductor surrounded by a layer of insulation, and a contact crimped  thereto.  The contact includes a              


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