Appeal 2007-0505
Application 10/402,476
reference “does not show positioning the insert in a first mold and filling the
first mold with a first material to form a lost core assembly” (Answer 3).
Indeed, Quinlan’s preform forms the entire cavity of the resulting
shell/preform article, and one of ordinary skill in the art would not have
recognized the preform filled with the incompressible filler material as a
formed “lost core” used to prepare that article (see, e.g., Specification ¶ 3,
and Quinlan, col. 1, ll. 17-28).
Marx does not support the Examiner’s finding that the disclosed
method can “form a lost core assembly, wherein the insert is molded into the
lost core assembly” and thus, supplies the steps missing from Quinlan
(Answer 3). Marx’s method involves positioning a “tool” into a “support
base” cavity to form a “sacrificial insert” of moldable material which does
not include the “tool,” and the “sacrificial insert” is used to obtain a molded
object. One of ordinary skill in this art would not have recognized the
combination of a molded “tool” and “sacrificial insert” as a “lost core” used
in preparing a molded object. The evidence in Quinlan and Marx further
does not support a determination that one of ordinary skill would have
combined the same because Quinlan’s preform insert with incompressible
filler and associated methods is not related to Marx’s molded “sacrificial
insert” and associated methods. Thus, even if one of ordinary skill in the art
did combine the references, the result would not have been the methods
encompassed by claims 1 and 16. See, e.g., Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed. Cir. 1988).
Accordingly, the primary combination of Quinlan and Marx does not
render prima facie obvious the methods specified in claims 1 and 16 and,
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