Appeal No. 2004-1920 Page 7
Application No. 09/302,1999
Section 103. In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992). This problem is not alleviated by consideration of the teachings of De Rosa and
Pesaturo.
The examiner also has taken the position that Moeller meets the requirements in
claim 1 that the impact tool comprise a cylindrically shaped hammer sleeve having open
ends within which first and second weight members are mounted. In order to arrive at
this conclusion, the examiner has found that there is in Moeller a first weight member
comprising the annular flange 16 that forms the upper portion of hammer 6 taken
together with removable stop collar 7, a second weight member comprising the
“cylindrical area [of hammer 6] below plane of surface [shoulder] 19,” and a cylindrically
shaped sleeve that comprises passage 18 in hammer 6 plus an extension of passage
18 which passes through the portion of the weight that defines shoulder 19 (Answer,
page 3). In other words, the examiner has divided hammer 6 into several pieces and
has created from the disclosed one-piece hammer another separate element in order to
define elements that will meet the limitations of claim 1. From our perspective, this
contrived reading of the claim language on the Moeller device can be accomplished only
by means of hindsight.
For the reasons expressed above, it is our conclusion that the teachings of
Moeller taken in view of those of De Rosa and Pesaturo fail to establish a prima facie
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