Appeal No. 97-4078
Application No. 08/232,947
Gaudino 3,300,168 Jan. 24, 1967
Carter-Mann 5,314,151 May 24, 1994
(filed Dec. 11, 1992)
Claims 1-5 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Gaudino in view of Carter-Mann.
Rather than reiterate the conflicting viewpoints advanced by the Examiner and the
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appellant, we make reference to the brief and answer for the details thereto.
OPINION
After a careful review of the evidence before us, we disagree with the Examiner that
claims 1-5 are properly rejected under 35 U.S.C. § 103 and we will not sustain the
rejection of claims 1-5.
As a consequence of our review, we make the determinations which follow.
Turning to the rejection of independent claim 1, we find that the Examiner has not
met the burden of setting forth a prima facie case of obviousness in rejecting claim 1. As
pointed out by our reviewing court, we must first determine the scope of the claim. "[T]he
name of the game is the claim." In re Hiniker Co., 150 F.3d 1362,1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998). The claim sets forth "a plurality of nubs along said one jaw
longitudinally spaced to receive said articles therebetween in mounting relation to said
4The Examiner responded to the brief (Paper No. 18) with an examiner's answer mailed May 28,
1997, (Paper No. 19). We will refer to this examiner's answer as simply the answer. The case was
remanded to the Examiner on July 21, 1998 for entry of an after-final amendment. The file jacket indicates
a second examiner's answer, but this is merely a letter to appellant indicating entry of the after-final
amendment dated August 7, 1996.
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