Ex parte SATO et al. - Page 6




          Appeal No. 2000-2139                                                        
          Application No. 08/938,704                                                  


          channels 207, 209 exert at most a minimal pressure on the                   
          shield 211 perpendicular to the circuit board 205.  Rather, as              
          shown in Fig. 4, they are spaced apart at their narrowest                   
          spacing a distance less than the thickness of the shield, so                
          that they will exert pressure on the shield wall 401 when it                
          is inserted between them, i.e., a pressure parallel to the                  
          circuit board, thereby releasably holding the shield in                     
          position.  Since the spring members 7 of the APA do not                     
          perform any such function, and exert a pressure                             
          perpendicular to the circuit board, we do not consider that                 
          the APA’s disclosure of such spring members 7 would have                    
          taught or motivated one of ordinary skill in the art to                     
          substitute such spring members for the spring channels of                   
          Beutler.  While Beutler’s spring fingers and the spring                     
          members 7 of the APA are both “springs”, their function and                 
          operation is so different that the substitution of one for the              
          other would not have been suggested by the prior art.                       
               The Ito reference does not supply the above discussed                  
          deficiency in the combination of Beutler, Mendolia and the                  
          APA.                                                                        
               Accordingly, the rejections of claims 9, 11 and 12 will                
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