Ex parte DENNIS et al. - Page 7




          Appeal No. 1997-0123                                                        
          Application 08/368,926                                                      


          obviousness.  Note In re Oetiker, 977 F.2d 1443, 1445, 24                   
          USPQ2d                                                                      
          1443, 1444 (Fed. Cir. 1992).                                                
               At the outset, we note that the relevant portion of                    
          independent claims 3, 6, 9, and 12 recites:                                 
                         ... each of the corner members                               
                         comprising at least one cross-slot                           
                         extending inward from an edge of the                         
                         corner member partway across the                             
                         corner member...                                             
          As asserted in the statement of the grounds of rejection                    
          (Answer, page 3), the Examiner seeks to modify the combined                 
          teachings of Nakamura and the admitted prior art by relying on              
          Suetake to supply the missing teaching of a film material                   
          corner member having the requisite cross-slot feature.  In the              
          Examiner’s view, the desire to prevent lead disconnections,                 
          absorb mechanical stress, and increase yield by prevention of               
          tape scattering would                                                       
          serve as motivating factors to the skilled artisan to modify                
          Nakamura and the admitted prior art with the teachings of                   
          Suetake.                                                                    
               In response, Appellants assert that the Examiner has                   


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