Appeal No. 96-2649
Application 08/418,875
We shall sustain, however, the standing 35 U.S.C. § 103
rejection of claims 19, 20 and 28, which depend from claim 1, as
being unpatentable over Portal. These claims further define the
deformation member recited in claim 1 as being a mandrel having
certain characteristics. According to the examiner,
Portal et al. discloses a mandrel having rotary
elements which are actuated in a helical motion, and
advises that such actuation produces a superior product
than prior mandrels which merely comprise an expander
plug with axial actuation which undesirably draws the
material axially. See column 1, lines 49 to 58.
However, to employ an expander plug with axial
actuation, as required by Claims 19, 20 and 28, in the
manner stated by Portal et al. to be known, rather than
the rotary expander suggested by Portal et al. is
considered to be an obvious exercise of mechanical
design [final rejection, page 3].
The appellant does not dispute that this proposed
modification would meet the mandrel limitations in claims 19, 20
and 28. Instead, the appellant essentially argues that Portal
teaches away from such a modification (see pages 21 through 24 in
the main brief and pages 9 through 11 in the reply brief). This
line of argument is not persuasive. All of the disclosures in a
reference must be evaluated for what they fairly teach one of
ordinary skill in the art, even when these teachings are phrased
in terms of a non-preferred embodiment or as being unsatisfactory
for the intended purpose. In re Boe, 355 F.2d 961, 965, 148 USPQ
-8-
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