Appeal No. 98-0003
Application No. 08/601,896
As to the claim 1 requirements regarding the holder, as
noted above, shutters 8 cover the windows in their Figure 2
position. These shutters may collectively be considered a
“holder” having a wall portion for covering the windows, as
broadly claimed in claim 1. Viewed in this sense, Ouwerkerk
provides response for all the limitations of appellant’s claim
1, making the teachings of Karakane cumulative in this
rejection. While a rejection over a single reference such a
Ouwerkerk that responds to all the limitations of a claim
would ordinarily be based on 35 U.S.C. § 102 rather than 35
U.S.C. § 103, the practice of nominally basing rejections on §
103 when, in fact, the actual ground of rejection is that the
claim is anticipated by the prior art has been sanctioned by a
predecessor of our present review court in In re Fracalossi,
681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982) and In re
Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974).
For these reasons, appellant’s arguments of nonobviousness are
simply not germane to the novelty issue discussed above.
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