Appeal No. 96-4162
Application 08/313,901
Claims 1 through 6 stand rejected under 35 U.S.C. § 101 because the invention as
claimed and disclosed is inoperative and thus lacks utility.
The examiner’s basis for this rejection is that “[t]he disclosure does not show any
type of structure which would form a container because there is no teaching for forming a
hollow surface in the container” (answer, page 4).
In rejecting claims under 35 U.S.C. § 101 as being directed to an invention which is
inoperative, “the PTO must do more than merely question operability - it must set forth
factual reasons which would lead one skilled in the art to question the objective truth of the
statement of operability.” In re Gaubert, 524 F.2d 1222, 1224-25, 187 USPQ 664, 666
(CCPA 1975). In questioning the operability of the appellant’s invention, the examiner has
merely pointed to the lack of disclosure of the method of forming a hollow surface in the
container, the same reasoning used in rejecting the claims under 35 U.S.C. § 112, first
paragraph. We find this reasoning just as unpersuasive with respect to operability.
Therefore, we shall not sustain the standing rejection of claims 1 through 6 under 35
U.S.C. § 101.
Rejection under 35 U.S.C. § 103
Claims 1 through 6 stand rejected under 35 U.S.C. § 103 as being unpatentable
over any one of Luther ‘891, Luther ‘898, Schwartzburg or Zushi in view of either Wilkinson
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007