Appeal No. 97-1646
Application 08/080,890
After considering the record in light of the arguments
presented by appellants and the examiner, we conclude that the
apparatus recited in claims 1, 8 and 9 would have been obvious
over Costarelli in view of Lamb. While a remote positioning
device would not be required to protect the operator of the
Costarelli apparatus from the inert material being cut thereby,
the use of such a device for loading the material M into the
Costarelli apparatus would have been suggested, as the examiner
states, “in order to eliminate the need for the operator to
contact and position the work between the cutter and the
retainer” (answer, page 7), and to “eliminate the need for an
operator to manually feed and position the work between the
retainer and cutting means” (id., page 13). While this
motivation for modifying Costarelli by adding a remotely
controlled positioning means as disclosed by Lamb might be
different from appellants’ purpose in using such a means, such
difference in purpose does not affect the obviousness of
combining the references. In re Beattie, 974 F.2d 1309, 1312, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992); In re Dillon, 919 F.2d 688,
693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rejection (2) will
therefore be sustained.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007