Ex Parte Witthoft - Page 4

                Appeal No. 2007-0737                                                                            
                Application No. 10/290,606                                                                      

                others.  Graham v. John Deere Co., 383 U.S. 1, 17. . . (1966).”  DyStar                         
                Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,                                     
                464 F.3d 1356, 1360, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006).                                     
                    On the record before us, we find sufficient evidence to establish prima                     
                facie obviousness of the claimed subject matter.  After identifying the                         
                difference between the claimed invention and the prior art, the Examiner                        
                clearly articulates a reason that would have motivated the skilled worker to                    
                have modified the prior art (Answer 4).  The Examiner also provides                             
                evidence from the scope and contents of the prior art that the modification                     
                was conventional and commensurate with the level of ordinary skill in the                       
                art (id. at 5).  Because these findings are at issue, we explain the Examiner’s                 
                case in more detail below.                                                                      
                       Ellis is the primary reference relied upon by the Examiner to establish                  
                the differences between the claimed invention and the prior art.  Ellis                         
                describes an ice cream “dipper” which utilizes “a pneumatic or hydraulic                        
                method of operation.”  (Ellis at p. 1, col. 1, ll. 25-27.)  The dipper comprises                
                a rigid exterior dipper shell (10) and a flexible interior diaphragm (12)                       
                within the rigid shell (Ellis at p. 1, col. 1, ll. 1-5; col. 2, ll. 8-11).  The dipper          
                also “includes an ejector bulb (15) that acts as a pump to compress air                         
                between the exterior rigid shell and the interior flexible diaphragm.  When                     
                the user pumps air into the area between [the ] rigid exterior shell and the                    
                flexible interior diaphragm of the scoop, the diaphragm deforms and                             
                displaces the ice cream from the scoop (see page 2, left column, lines 40-                      
                50).”  (Br. 3.)                                                                                 



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