Ex parte WONG - Page 9




          Appeal No. 1998-0338                                                        
          Application No. 08/350,865                                                  


          USPQ 385, 388 (Fed. Cir. 1984), cert. dismissed, 468 U.S. 1228              
          (1984), citing Kalman v. Kimberly-Clark Corp., 713 F.2d 760,                
          772, 218 USPQ 781, 789 (Fed. Cir. 1983).  Since APA does not                
          disclose any openings in the lower plate, the Examiner’s                    
          rejection fails, and we will not sustain the rejection of                   
          claim 14 under 35 U.S.C.  102.  Likewise, we will not sustain              
          the rejection of claims 15 and 16 which depend from claim 14                
          and include the same unmet limitation.                                      
               With respect to claim 1, the Examiner reasons that it                  
          would have been obvious to use the openings or slits of                     
          Nishimoto in APA “to facilitate the electrical connection or                
          bond.”  (Answer-page 5.)  The Examiner states “Nishimoto                    
          discloses that openings or slits could be used to alleviate                 
          stress and avoid cracking a relatively rigid insulative layer               
          when it is in contact with a conductive layer.  Therefore,                  
          Nishimoto provides the proper motivation to support the 35                  
          U.S.C.  103 rejection.”  (Answer-page 13.)                                 
               Appellant argues that the Examiner has used Nishimoto to               
          solve a problem recognized by Appellant, not known in the                   
          prior art.  Appellant contends, even if Appellant’s problem                 


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