Appeal No. 2003-1716 Page 8
Application No. 09/946,205
Section 103
From the preceding discussion, it can be seen that Lukas-Laskey describes the
invention recited in claim 1 within the meaning of 35 U.S.C. § 102(b). As stated in In re
Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974), "lack of novelty in
the claimed subject matter, e.g., as evidenced by a complete disclosure of the invention
in the prior art, is the 'ultimate or epitome of obviousness'" (citation omitted). On this
basis, we affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over
Lukas-Laskey.
Again, in responding to the rejection under 35 U.S.C. § 103(a), applicant's sole
argument is that Lukas-Laskey constitutes a non-enabling reference (Paper No. 10,
page 7). We disagree with that argument for reasons already discussed.
Accordingly, we affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Lukas-Laskey. As previously indicated, dependent claims 2 through
7 fall together with independent claim 1.
Other Issue
One further matter warrants attention. In the event of further prosecution of the
subject matter of this application, e.g., in a re-filed application, we recommend that the
examiner determine whether any claim in the application defines merely an obvious
variation of an invention disclosed and claimed in U.S. Patent No. 6,403,579, issued
June 11, 2002. If the answer to that question is yes, "a terminal disclaimer is required
to prevent undue timewise extension of monopoly." In re Vogel, 422 F.2d 438, 442,
164 USPQ 619, 622 (CCPA 1970).
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