Appeal No. 1998-0372
Application No. 08/533,585
The applied references fail to provide sufficient evidence that the subject matter as
a whole of Claim 21 would have been obvious to the artisan. For “couplings,” the rejection
turns to Okada, which “teaches the use of a rivet-like structure which encloses a portion of
the surface areas of the bound elements,” and Dennis, which “teaches that a clip like
connector can be used in place of the prior art techniques of bonding and riveting.”
(Answer, page 5.) Although there is much discussion concerning the proper interpretation
of “couplings,” and whether “clips” are known equivalents for rivets or welds, the rejection
and references as applied do not speak to all the requirements of Claim 21. The inquiry
into obviousness of the claim does not turn on what prior art structure may or may not
reasonably be referred to as a “coupling.” The claim requires that “each support lead
[have] one and only one end connected to said lead frame,” and “each coupling enclosing
an end of said support lead not connected to said lead frame and at least a portion of one
of said extensions.”
We have considered all of the examiner’s points in the Answer, but the thrust of the
examiner’s position appears directed to showing that it was within the artisan’s skill to
have fashioned a device within the purview of Claim 21. The mere fact that the prior art
could be modified to result in the claimed invention would not have made the modification
obvious unless the prior art suggested the desirability of the modification. See, e.g., In re
Laskowski, 871 F.2d 115, 117, 10 USPQ2d 1397, 1398 (Fed. Cir. 1989).
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