Appeal No. 95-1744
Application 08/216,543
negative pressure to be generated in the area of the
valve region of the nose, and allows a better and more
comfortable fit into the nose that the H.S. Martin
structure [i.e., the structure of Exhibit A]. As seen
in FIGURES 1 and 2, the free end 16 preferably has a
configuration of a hollow triangular prism . . . .
In view of these expressly stated advantages, i.e., that a free
end in the configuration of a hollow triangular allows a greater
area of negative pressure to be generated and provides a sealed
fit which is more comfortable than the free end of Exhibit A, the
claimed provision of a hollow triangular prism cannot simply be
dismissed as a “matter of subjective design” as the examiner
proposes.
As to the examiner’s assertion that “what constitutes a
comfortable fit for a desired purpose” would have been obvious,
obviousness under § 103 is a legal conclusion based on factual
evidence (In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988)). Accordingly, this bald assertion by the
examiner, without evidence in support thereof, does not provide a
sufficient factual basis for establishing the obviousness of the
of the claimed configuration of the free end within the meaning
of 35 U.S.C. § 103 (see In re GPAC Inc, 57 F.3d 1573, 1582, 35
USPQ2d 1116, 1123 (Fed. Cir. 1995) and In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S.
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007