Appeal No. 96-0616
Application 08/036,249
are longer than the remaining leads of the lead group. Thus,
we must conclude that the examiner used impermissible
hindsight. Since all the limitations of claims 8 and 9 are7
not suggested by the applied prior art for the reasons set
forth above, the decision of the examiner to reject claims 8
and 9 under 35 U.S.C. § 103 over Kikuchi is reversed.
Rejection (2)
Kuwahara teaches a method of preventing the detachment of
electronic parts 1 or 8 from a strip of backing paper 5
wherein the outermost leads 2 and 3 (Figs. 1 and 2) or 12 and
13 (Fig. 3) of an electronic part are made longer than the
remaining leads and an adhesive tape 6 is attached to the
backing paper with the outermost leads held securely
therebetween.
7The conclusion that the claimed subject matter is obvious must be
supported by evidence, as shown by some objective teaching in the prior art or
by knowledge generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine, 837 F.2d
1071,1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). The examiner may not,
because of doubt that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply deficiencies in the
factual basis for the rejection. See In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 177 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
7
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