Ex Parte Sandstrom - Page 5




          Appeal No. 2004-1341                                                        
          Application No. 09/806,220                                                  


               As indicated above, Manten expressly teaches away from                 
          cylindrical or round drill string threads in favor of conical               
          drill string threads.  Jansson teaches cylindrical or round drill           
          string threads having a number of specifically dimensioned and              
          interrelated parameters including pitch and crest radius of                 
          curvature.  Given the divergent natures of these teachings, the             
          only suggestion for selectively combining Manten’s conical thread           
          with the particular pitch and crest radius of curvature                     
          dimensions of Jansson’s cylindrical or round thread stems from              
          hindsight knowledge impermissibly derived from the appellant’s              
          disclosure.  Furthermore, the combined teachings of these                   
          references provide little, if any, factual support for the                  
          examiner’s determination that the pitch and crest radius of                 
          curvature of Manten’s conical thread are result effective                   
          variables whose optimization would have been within the skill of            
          the art.                                                                    
               Accordingly, we shall not sustain the standing 35 U.S.C.               
          § 103(a) rejection of claim 1 as being unpatentable over Manten             
          in view of Jansson.                                                         
               As the examiner’s application of Yao does not cure the above           
          noted shortcomings of Manten and Jansson relative to the subject            
          matter recited in parent claim 1, we also shall not sustain the             


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