Ex parte COLLINS - Page 4




          Appeal No. 96-3919                                                          
          Application 08/224,163                                                      


               In response, appellant states on page 4 of the brief that              
          “[he] does not contest the formal nature of this rejection” and             
          that the terms in question were intended to be “the arm” and “the           
          blade.”  Appellant further offers to make such amendments to the            
          claims, if required, upon resolution of this appeal.                        
               Since appellant has not pointed out how the examiner has               
          erred in the rejection of claims 12 and 13 under 35 U.S.C.  112,           
          second paragraph, and has in effect acquiesced to the rejection,            
          we are constrained to sustain this rejection.                               
                            The 35 U.S.C.  103 Rejection                             
               In rejecting the appealed claims under 35 U.S.C.  103, the            
          examiner states:                                                            
               British Patent #8626 discloses substantially similar                   
               structure [as appellant], see Figure 2.  It is noted                   
               that using the blade portion to mark is merely intended                
               use . . . and does not structurally distinguish over                   
               the art . . . .  The German Patent discloses using the                 
               blade portion for marking, while Niedharedt [sic] et al                
               discloses a ball point and highlight marker.  It would                 
               have been obvious to a mechanic with ordinary skill in                 
               the art to use these teachings.  The motivation is                     
               provided by the references. [answer, page 4]                           
               In the “Response to argument” section of the answer, the               
          examiner further states:                                                    
                    The German Patent clearly discloses a blade                       
               similar to appellant’s in Figures [sic] 2 and Figure 6.                
               Figure 6 additionally discloses marking pages with such                
               a blade.  It would have been obvious . . . to                          
               substitute such a blade to [sic] the primary reference.                

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