Appeal 2006-1400
Application 10/649,128
claimed invention under § 103. As noted above, the examiner has provided a
rationale for using the spring-clip disclosed by Spector on the covers of Moore and
Romero and has concluded that the exact size of the cover depends on the
dimensions of the article that is desired to be covered.
With respect to Appellant’s arguments directed to claims 4-8, which claim a
cap in combination with a cover, we note that the cap and cover are known
elements which function in a known way and their use together would have yielded
predictable results. Under KSR, their use together is likely to have been obvious to
one of ordinary skill.
CONCLUSION
The rejection of claim 8 under 35 U.S.C. § 112, second paragraph is
reversed. A new rejection of claim 8 under 35 U.S.C. § 112, first paragraph, has
been entered by the Board pursuant to our authority under 37 C.F.R. § 41.50(b).
The obviousness rejections of claims 1-13 have been sustained.
This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004),
1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R. § 41.50(b) provides
"[a] new ground of rejection pursuant to this paragraph shall not be considered
final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
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