Appeal No. 2005-2435
Application No. 10/407,498
It follows that we also hereby reverse the § 103 rejection of
claim 6 over Allred in view of Micro Mark Catalogue.
OTHER ISSUES
We consider it appropriate to emphasize that our above noted
opinion does not forestall the possibility that a prima facie
case of anticipation may be established under an inherency theory
against, for example, appealed claim 1 based on the Allred patent.
As fully explained in this opinion, the § 102 rejection of this
claim is deficient because the examiner had not even attempted to
provide any analysis in support of a belief that patentee's safety
device possesses the inherent capability of performing the
attachment functions of claim 1. Therefore, upon return of this
application to the jurisdiction of the Examining Corps, it would
behoove the Examiner as well as the appellant to consider whether
the safety device of Allred inherently possesses the functionally
defined attachment limitations of, for example, appealed claim 1.
See In re Schreiber, 128 F.3d at 1477, 44 USPQ at 1431-32.
Similarly, it would behoove the Examiner as well as the
appellant to consider whether other prior art apparatus might
render at least certain of the appealed claims unpatentable
8
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