Appeal No. 98-1233
Application No. 08/612,045
of a square shaped end vis-à-vis other polygonally shaped ends
solves no stated problem insofar as the record is concerned,
leading us to conclude that such a provision is an obvious
matter of design choice. See In re Kuhle, 526 F.2d 553, 555,
188 USPQ 7, 8-9 (CCPA 1975). Similarly, with respect to claim
7, the provision of the tool being "bonded" to the guard 22 2
vis-à-vis the one-piece construction arrangement of Carlson
also solves no stated problem insofar as the record is
concerned, once again leading us to conclude that such a
provision is an obvious matter of design choice.
In summary:
The examiner's rejection of claims 1-9 under 35 U.S.C.
§ 103(a) is reversed.
New rejections of claims 1-3 and 5-7 have been made.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
2The provision of the tool being "bonded" to the plaster
guard is not mentioned in the specification. If such a
provision a vital part of the appellant's invention, it seems
strange to us that all mention of its importance was omitted
from the original description. See Graham v. John Deere Co.,
383 U.S. 1, 24-26, 148 USPQ 459, 469-470 (1966).
7
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