Appeal No. 96-3622
Application 29/019,382
but not its overall appearance, an obviousness rejection is
inappropriate. See In re Cho, 813 F.2d 378, 382, 1 USPQ2d 1662,
1663 (Fed. Cir. 1987).
Page 3 of the answer indicates the examiner’s view that it
would have been obvious to one of ordinary skill in the art at
the time of the invention “to have varied the number of spheres,
as applicant himself is claiming a multiple number of spheres.”
In the responsive arguments portion of the principal answer, the
examiner indicates at the bottom of page 4 that “it is the
examiner’s contention that merely varying the number of spheres
would have been an obvious variation, in view of appellant’s own
disclosure. As appellant has shown that adding and subtracting
spheres are obvious variations, then the same holds true for the
reference used in the rejection.”
Besides being based on apparent prohibitive hindsight, the
examiner’s reasoning is misplaced because we do not see that the
examiner has provided a so-called Rosen-type reference which, as
we noted earlier, must present to the ordinary designer design
characteristics which are “basically the same” as the claimed
4
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