Appeal Number: 2006-3046
Application Number: 10/130,596
that is within the level of one skilled in the art at the time the claimed
invention was made.
(Reply Br. 2-3).
We must agree with the appellants that the examiner has shown no evidentiary
support for his assertions as to where such a circuit board would be positioned. As
the appellants argue, there may be many positions on an engine in which to mount
a circuit board and there may be many positions an engine may be oriented relative
to the drive unit of Yamaguchi. We cannot say that there are so few that the
claimed orientation in particular would have been envisaged by a person of
ordinary skill in the art absent the appellants’ specification to provide a blueprint,
particularly as Yamaguchi provides no teaching or suggestion of how the engine is
to be rotatably oriented with respect to Yamaguchi’s drive unit, or how any
cylinders are to be positioned relative to the circuit board on the electric motor
drive unit in Yamaguchi.
Certainly, we agree with the examiner that so long as a reconstruction that
takes into account only knowledge which was within the level of ordinary skill at
the time the claimed invention was made, and does not include knowledge gleaned
only from the applicant's disclosure, such a reconstruction is proper, we must
caution the examiner that there must be some evidentiary support for such asserted
knowledge. The record is absent even the faintest glimmer of any evidentiary
support for any engineering principal that a person of ordinary skill in the art
would have used to select the claimed orientation. Therefore, we find the
examiner's arguments to be unpersuasive.
Accordingly we do not sustain the examiner's rejection of claims 2, 4, 5 and 9
through 14 under 35 U.S.C. § 103(a) as obvious over Yamaguchi and Aoike.
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