Appeal No. 97-4065
Application 29/036,355
See Hupp v. Siroflex of America, 122 F.3d 1456, 1461, 43 USPQ2d 1887, 1890 (Fed. Cir.
1997). It is axiomatic that anticipation of a claim under § 102 can be found only if the prior art
reference discloses every element of the claim. See In re King, 801 F.2d 1324, 1326, 231 USPQ
136, 138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
Appellant argues that Mereness shows in Figure 9 a triangular strip with straight sides and fails
to show the claimed rounded contours. On page 4 of the answer, the Examiner argues that it would
have obvious to round the corners of the triangular strip shown in Figure 9.
As pointed out above, in order for us to find that Mereness' Figure 9 anticipates Appellant's
claim, we have to find that Mereness teaches every limitation of the claim. We find that Mereness fails
to teach the rounded contours as claimed and thereby we will not sustain the Examiner's rejection of the
claim under 35 U.S.C. § 102.
The claim also stands rejected under 35 U.S.C. § 103 as being unpatentable over Mereness in
view of Merritt. If this inquiry is to be made under 35 U.S.C. § 103, then the proper standard is
whether the design would have been obvious to a designer of ordinary skill of the articles involved. In
re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981). A fundamental element for a 35
U.S.C. § 103 rejection of a claimed design is "there must be a
3
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007