Ex parte JARVIS - Page 5




                 Appeal No. 1999-2439                                                                                     Page 5                        
                 Application No. 08/731,857                                                                                                             


                 See, for example, W. L. Gore and Associates, Inc. v. Garlock,                                                                          
                 Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.                                                                             
                 1983), cert. denied, 469 U.S. 851 (1984).  In that regard, it                                                                          
                 is our view that the combined teachings  of the applied prior         2                                                                
                 art would have made it obvious at the time the invention was                                                                           
                 made to a person having ordinary skill in the art to have                                                                              
                 modified Van Hoose's male member (i.e., rectangular shank 16)                                                                          
                 to accept the extension bar 12 of Cromwell's tool extension                                                                            
                 adapter 10.                                                                                                                            


                          Moreover, we agree with the appellant's argument (brief,                                                                      
                 p. 10) that the applied prior art does not teach or suggest                                                                            
                 either (1) a socket having different sized openings at each                                                                            
                 end thereof as recited in claim 14, or (2) a straight adapter                                                                          
                 having different sized openings at each end thereof as recited                                                                         
                 in claim 14.  Likewise, the applied prior art does not teach                                                                           




                          2The test for obviousness is what the combined teachings                                                                      
                 of the references would have suggested to one of ordinary                                                                              
                 skill in the art.  See In re Young, 927 F.2d 588, 591, 18                                                                              
                 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d                                                                          
                 413, 425, 208 USPQ 871, 881 (CCPA 1981).                                                                                               







Page:  Previous  1  2  3  4  5  6  7  8  9  Next 

Last modified: November 3, 2007