Appeal No. 1996-1266
Application 08/246,804
we are in further agreement with appellant that the claimed “modular, one piece, passage unit” does
“not ‘integrate’ the complex parts of the substantially different device of Stolz” as was the case with the
rigid construction in Larson, supra, and In re Fridolph, 309 F.2d 509, 135 USPQ 319
(CCPA 1962) (reply brief, page 2; see also principal brief, pages 7-8). Indeed, the difficulty that we
have with the examiner’s contention that “it would have been obvious . . . to have provided the integral
parts in a one-piece construction . . . by conventional blow molding,” apparently of “plates 13, 18 [that]
are integral with cylinder 11” (answer, pages 6-7; see also page 5), is that such a modification would
violate the requirement in Stolz that “sleeve 11 . . . may be made of any elastic material such as rubber
or a composition product” so that the “sleeve” can be removed after the concrete has set (page 1,
second col., lines 33-35, and page 2; emphasis supplied). Thus, it is inescapable that the motivation
relied upon by the examiner to modify the device of Stolz in order to arrive at the “modular, one piece,
passage unit” of the appealed claims arises solely from the description of appellant’s invention in his
specification and not from some teaching or suggestion that Stolz would have conveyed to one of
ordinary skill in this art. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983).
The examiner’s decision is reversed.
Reversed
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
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CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
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