Appeal No. 2006-1105
Application No. 10/643,626
With regard to the rejection of claims 13 and 14, the examiner notes that claim 13
requires that the feet are “rigidly affixed” to the frame but concludes that rigidly affixed
feet would have been obvious to one of ordinary skill in this art “to match a common
size” paint container if one did not need the rotating hooks/feet of Welt to accommodate
different sized containers (Answer, pages 3-5). Appellant argues that the examiner’s
proposed modification ignores the teaching in Welt of rotatably securing the feet/hooks
to the grid so that, when not in use, the feet and hooks may be rotated toward one
another so that the device will occupy a minimum of space (Brief, page 6).
This argument is not persuasive. Omission of a feature with its corresponding
loss of function would have been well within the ordinary skill in this art, i.e., eliminating
the pivotable hooks and feet of Welt by making these hooks and feet fixed if the
adjustable feature taught by Welt was unnecessary (if the device was only used on one
size paint container; see col. 1, ll. 50-55, of Welt). See In re Wilson, 377 F.2d 1014,
1017, 153 USPQ 740, 742 (CCPA 1967); In re Hamilton, 404 F.2d 1388, 1390, 160
USPQ 199, 201 (CCPA 1969).
With regard to appellant’s arguments concerning claims 14 and 16, we adopt the
examiner’s response on pages 5-6 of the Answer.
For the foregoing reasons and those stated in the Answer, we determine that the
examiner has established a prima facie case of obviousness based on the reference
evidence. Based on the totality of the record, including due consideration of appellant’s
arguments, we determine that the preponderance of evidence weighs most heavily in
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