Appeal No. 95-4738
Application No. 08/146,868
Bishop teaches that the rigid back-up ring 33, preferably of
polytetrafluoroethylene (Teflon™), is used to prevent the O-ring
9 from movement between the sensing element 7 and the metal can
3. Thus, Bishop's back-up ring 33 is not integrally formed as2
part of the bottom wall of the can 3. Accordingly, the
limitation the limitation "an annular stop surface integrally
formed as part of the bottom wall" of claim 1 is not met by
Bishop.
The examiner determined (answer, p. 5) that it would have
been obvious to have integrally formed Bishop's back-up ring and
bottom wall, such being a design choice. We do not agree. In
this case, the appellants were well aware of the teachings of
Bishop and stated that their invention provided a less expensive
(both in material and assembly costs) alternative. Thus, this 3
is not a case where the claimed difference solves no stated
problem and would have been an obvious matter of design choice.
See In re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975). A
rejection based on 35 U.S.C. § 103 must rest on a factual basis,
2See column 4, lines 3-6, of Bishop.
3See page 2, line 3, to page 3, line 5, of the
specification.
4
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