Ex parte WAITL et al. - Page 8




               Appeal No. 1999-0598                                                                                                 
               Application No. 08/866,064                                                                                           

               at and even with the planar component mounting surface...”  While the examiner                                       
               recognizes this, Stokes is relied on for a teaching of the equivalency of                                            
               through hole terminals and butt terminals and concludes that the through hole terminals of                           
               Ishizaki may obviously be butt terminals. The examiner states that the combination of                                
               Ishizaki and Stokes would have been made “to facilitate mounting,” but we find nothing                               
               to support such an argument and no cogent reason why the skilled artisan would have                                  
               substituted butt terminals for the through hole terminals disclosed by Ishizaki.                                     
                       For at least the reasons supra, we will not sustain the rejection of independent                             
               claims 8 and 14 under 35 U.S.C. § 103 over Ishizaki and Stokes.                                                      
                       The examiner makes an alternative rejection of these claims under 35 U.S.C.     §                            
               103 based on the addition of Osamu to the combination of Ishizaki and Stokes.                                        
                       We will not sustain this alternative rejection since, in our view, Osamu does not                            
               provide for the deficiencies noted supra with regard to Ishizaki and Stokes.  More                                   
               particularly, the examiner relies on Osamu to provide for a teaching of “a width of the                              
               planar mounting surface being greater than a thickness of the solder terminals,” as                                  
               claimed, even if our interpretation of this claim language, supra, is accepted.                                      


                       Even assuming, arguendo, that the examiner’s argument has merit, and Osamu                                   
               does teach the width of a planar mounting surface to be greater than a thickness of the                              
               solder terminals, this still does not provide for the claim limitation of the solder terminals                       

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