Appeal No. 1997-3087
Application 08/541,519
(answer, page 11) because appellant
fails to . . . state both why it is necessary and of
critical importance to have the micro-switch
toggling protrusion on the lower portion of the
retainer, and offers no explanation as to why the
micro-switch toggling protrusion would not perform
equally well if it were placed on any other
reciprocating portion of the latch while engaging
the micro-switch. [Answer, pages 10-11.]
While we are not unmindful of the points raised by the
examiner in the answer, including those set forth above, in
rejecting the appealed claims, we cannot support the positions
taken by the examiner in concluding that appellant’s claims
are unpatentable under 35 U.S.C. § 103. Assuming as a general
proposition that it would have been obvious in light of the
teachings of Guth to provide a microswitch and actuator in
Bisbing for the purpose of indicating the condition of the
latch, the examiner’s further position that the specifically
claimed location of the protruding tab can be dismissed as an
obvious matter of design choice is inappropriate. First,
criticality is not a requirement for patentability under 35
U.S.C. § 103. See, for example, W. L. Gore & Assocs. v.
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