Appeal No. 2004-0787
Application No. 09/827,048
in other combinations; there must be some teaching, suggestion, or incentive to make
the combination made by the inventor.); Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1044, 1051, 5 USPQ 1434, 1438 (Fed. Cir. 1988).
The Examiner rejected claims 39 and 44 over the combination of Tozuka and
Gelati. According to the Examiner, “Tozuka when modified by Gelati does not uses
[sic, use] the inturned lip integral with the contact section that acts as a stop for the
second conductor”. (Final Rejection, p. 2). The Examiner asserts that it would have
been “obvious and cost-effective to manufacture the end portion of the end of the
Tozuka’s holder (11) flush with the portion (33) of the contact component (21) to
reduce the overall dimensions of the connector.” (Final Rejection, p. 2).
We cannot uphold the Examiner’s rejection. Appealed claims 39 and 44
require the contact component to include an opening extending through an
intermediate section that receives a second conductor, and an inturned lip integral
with the contact section in axial spaced relation from said opening in the intermediate
section. The inturned lip acts as a stop for the second conductor when inserted
through said opening in the intermediate section.
The modification of Tozuka’s holder (11) to be flush with the portion (33) of
the contact component (21) would not result in the claimed invention. Specifically,
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