Appeal 2007-0676
Application 09/803,221
The following rejections are before us for review.
1. Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Damm and Ernest.1
2. Claims 2-5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Damm, Ernest, and Aukzemas.2
ISSUE
Appellant contends that there would be no motivation for one having
ordinary skill in the art to modify the screw of Ernest with the collar of Damm,
because such a modification would destroy the intended operation of Ernest,
neither reference provides any motivation for the combination, and Ernest already
discloses a locking element that serves this function, so no advantage would be
1 The Examiner states the rejection of claim 1 as unpatentable over Damm in view
of Ernest (Answer 3) and, in the alternative, Ernest in view of Damm (Answer 4).
We treat these rejections together, because they are based on the same combination
of references. See In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 267 (CCPA
1961) (“where a rejection is predicated on two references each containing pertinent
disclosure which has been pointed out to the applicant, we deem it to be of no
significance, but merely a matter of exposition, that the rejection is stated to be on
A in view of B instead of on B in view of A, or to term one reference primary and
the other secondary.”)
2 Appellant misstates the rejection of claims 2-5 in the Brief as being rejected over
Earnest in view of Aukzemas (Appeal Br. 3). The Examiner, however, clearly
stated in the Final Rejection (at 3) and in the Answer (at 4), that “[c]laims 2-5 are
rejected under 35 U.S.C. 103(a) as being unpatentable over modified Earnest [as
modified by Damm] as applied to claim 1 above, and further in view of
Aukzemas.”
3
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