Appeal No. 96-3174
Application 07/970,608
ambiguous as to this claim requirement. In addition, it is
not apparent to us, and the examiner has not persuasively
pointed out, where Maus suggests modifying the timing of the
compression stroke step and injection step to accomplish step
(c) of claim 1, such that the claimed method as a whole would
have been obvious to one of ordinary skill in the art. In
this regard, the mere fact that the prior art method of Maus
could be modified in a manner which would result in the
claimed method does not make such modification obvious unless
the prior art suggests the desirability of doing so. In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). We therefore shall not support the examiner’s § 103
rejection of claims 3, 4, 6, 8 and 9 as being unpatentable
over Maus.
As to method claims 10-17, independent claim 10 in
paragraph (c) calls for the step of commonly and
simultaneously applying a main clamp force of the injection
molding machine “before commencement of said injection. . . .”
In support to her § 103 rejection of these claims, the
examiner has taken the position that “the overall process of
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