Ex parte ENDO et al. - Page 6




          Appeal No. 2000-2163                                       Page 6           
          Application No. 08/922,521                                                  


          larger than a predetermined value before the coated electric                
          wire is press-connected with the pressconnecting terminal,                  
          wherein the heated and softened areas of the coating portion                
          of the coated electric wire remain on the coated electric wire              
          as it is forced into the press-connecting terminal.  Thus, we               
          see no motivation in the applied prior art for a person having              
          ordinary skill in the art at the time the invention was made                
          to have modified the Admitted Prior Art to arrive at the                    
          method of claim 1 or the apparatus of claim 3.  At best, the                
          combined teachings of the applied prior art would have                      
          suggested desheathing the coated electric wire of the Admitted              
          Prior Art as taught by Keen prior to insertion of the wire                  
          into the press-connecting terminal.                                         


               In our view, the only suggestion for modifying the                     
          Admitted Prior Art in the manner proposed by the examiner to                
          meet the above-noted limitations stems from hindsight                       
          knowledge derived from the appellants' own disclosure.  The                 
          use of such hindsight knowledge to support an obviousness                   
          rejection under 35 U.S.C.                                                   









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