Appeal No. 1998-3300
Application 08/722,907
OPINION
In reaching our decision in this appeal, we have given careful consideration to appellants’
specification and claims, to the applied prior art references, and to the respective positions articulated
by appellants and the examiner. As a consequence of our review, we have made the determination that
the examiner’s above-noted rejections will not be sustained. Our reasons follow.
Looking first at the rejection of claims 1 through 3, 6 and 7 under 35 U.S.C. § 103 based on
the collective teachings of Bross and Di Silvestro, in contrast to the position of the examiner, we find no
reasonable teaching or suggestion in Di Silvestro for merely reversing the orientation of the sealing
element (3) seen in Figure 4 of Bross. The examiner’s assertion on page 5 of the answer that “[a]
mechanic with ordinary skill in the art in view of the Swiss Patent clearly could adapt the disk of the
primary reference to be used in the reverse direction” (emphasis added), in our opinion, is fraught with
speculation and conjecture. While it is true that Figures 6 and 7 of Di Silvestro appear to show sealing
elements that would have the convex portions thereof facing in different directions relative to the
marking nib of a writing instrument, we note that the
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