Appeal No. 95-3582
Application 08/179,419
flange” as the examiner asserts. Moreover, there is2
absolutely nothing to indicate that these undulating ridges or
ribs (which are depicted in Fig. 2 as being extremely thick
relative to the extent of radial projection) have the
capability of flexing relative to the tubular body in the
manner set forth in the last three lines of independent claims
21 and 26.3
As to the examiner’s contention that it would have been
obvious to make the ribs or ridges of Honkanen disc-shaped “in
order to be better secured in the body,” we must point out
that obviousness under § 103 is a legal conclusion based on
factual evidence (In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988)) and the mere fact that such a
result would occur does not serve as a proper basis for
concluding that such
2The American Heritage Dictionary, Second College Edition, 1982,
Houghton Mifflin Company, Boston, MA defines a “disk” or “disc” as being --
A thin, flat circular plate --.
It is well settled that an “adapted to . . .” clause sets forth a3
function which the article or apparatus must be structurally capable of
performing (see, e.g., In re Venezia, 530 F.2d 956, 959, 189 USPQ 149, 151-52
(CCPA 1976)) and such a functional statement must be given full weight and may
not be disregarded in evaluating the patentability of the claims (see, e.g.,
Ex parte Bylund, 217 USPQ 492, 498 (Bd. App. 1981)).
6
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