Ex Parte Nunes et al - Page 2


                Appeal 2007-2982                                                                              
                Application 10/126,792                                                                        
                      Peter J. Nunes, Fredrick R. Kelly and Brian D. Andresen (appellant)                     
                appeal from a final rejection of claims 1-16.  35 U.S.C. § 134(a).  We have                   
                jurisdiction.  35 U.S.C. § 6(b).                                                              
                      The Examiner rejected claims 1-16 under 35 U.S.C. § 103(a) as                           
                unpatentable over the combination of Pawliszyn (WO 98/41885 published                         
                24 September 1998) and Konik (U.S. Patent 5,768,455 issued 16 June 1998).                     
                     Upon consideration of the record, we affirm for the reasons given in                    
                the Examiner's Answer (entered 14 February 2007).                                             
           1          The Appeal Brief (filed 10 November 2006) and the Examiner's                            
           2    Answer were written prior to the Supreme Court's decision in KSR                              
           3    International Co. v. Teleflex, Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007).                  
           4          With respect to appellant's argument (Appeal Brief, page 16) that                       
           5    there is no suggestion or motivation to combine or modify Pawliszyn with                      
           6    the tapered guide (element 34) of Konik, we note that all appellant is doing                  
           7    is using a known element for its intended purpose (to guide a thread) to                      
           8    achieve an expected result.  KSR counsels against such a use being non-                       
           9    obvious.  127 S. Ct. at 1739.  See also In re Trans Texas Holdings Corp.,                     
          10    Nos. 2006-1599, -1600, slip op. at 18-19 (Fed. Cir. Aug. 22, 2007) (the                       
          11    Board did not err in concluding that it would have been obvious to combine                    
          12    the indexed loan accounts disclosed in Murkherjee with the well-known                         
          13    practice of offering loans secured by mortgaged real estate).  Moreover, KSR                  
          14    states that when a work is available in one field (Konik), design incentives                  
          15    can prompt variations of it in the same field (Konik) or a different field                    
          16    (Pawliszyn).  127 S. Ct. at 1740.  See also (1) In re Icon Health and Fitness,                
          17    Inc., No. 2006-1573, slip op. at 7 (Fed. Cir. Aug. 1, 2007) ("familiar items                  


                                                      2                                                       

Page:  Previous  1  2  3  Next

Last modified: September 9, 2013