Ex parte BACINA et al. - Page 5




          Appeal No. 96-1201                                                            
          Application 08/122,970                                                        

          would necessarily add additional strength.  This assumption is                
          not supported by any evidence adduced by the examiner. It is an               
          additional assumption on the examiner's part that added strength              
          is desirable or necessary.  Furthermore, it might be expected                 
          that a larger depression would have other adverse consequences.               
                    Secondly, the disclosure of DeRees is actually related              
          to fabricating beams or rails out of sheet metal, and the                     
          combined teachings of the admitted prior art and DeRees do not                
          suggest using the configurations disclosed in DeRees on vehicle               
          body panels as opposed to beams.                                              
                    Thirdly, we are of the view that the examiner's                     
          combination of references is based on hindsight, particularly,                
          inasmuch as the examiner has picked depression shapes 112 and 120             
          of DeRees while disregarding DeRees’ other disclosure of                      
          additional reinforcement shapes.  We note that the configuration              
          shown at 112 in DeRees would prevent funneling in only half of                
          the occurrences, for when the point of the configuration 112 is               
          facing downwardly, the configuration actually increases                       
          funneling.                                                                    
                    Since DeRees is completely silent with respect to any               
          teaching or suggestion regarding eliminating paint drips or runs,             
          and the examiner has chosen from all the reinforcement shapes of              


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