Ex parte SKOW et al. - Page 7




          Appeal No. 96-1883                                                          
          Application 08/078,380                                                      


          “slanted.”  Moreover, it is clear from the explanation of the               
          Whelan invention that the holes must be inwardly or outwardly               
          slanted, so as to be able to move the articles inwardly and                 
          outwardly on the work surfaces (column 5, line 17 et seq.).  This           
          being the case, the appellants’ conclusion that an angular,                 
          nonlinear, stepped path cannot be created is not persuasive.  To            
          the same extent as this is present in the appellants’ invention,            
          so too, in our view is it present in Whelan.  The appellants’               
          argument that the Whelan holes do not impart direction to the               
          articles also fails, for it is clear that such is not the case.             
               The rejection of claim 1 as being anticipated by Whelan is             
          sustained.  Since the appellants have chosen to group claims 2,             
          8, 15, 17, 18, 22, 25 and 34 with claim 1 (Replacement Brief,               
          page 6), the rejection is also sustained as to these claims.  We            
          note that the appellants have not mentioned claim 35 in the                 
          required grouping of claims.  This claim depends from claim 34,             
          which has been included in the grouping, and we thus shall assume           
          this was an inadvertent omission, and will sustain the examiner’s           
          rejection of claim 35 along with the group.                                 
                         The Rejection Under 35 U.S.C.  103                          
               The question under 35 U.S.C.  103 is not merely what the              
          references expressly teach but what they would have suggested to            

                                          7                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next 

Last modified: November 3, 2007