Ex parte OCHI et al. - Page 16




          Appeal No. 1998-2471                                      Page 16           
          Application No. 08/222,913                                                  


          Claim 17 specifies in pertinent part a “cylindrical member                  
          [that] has a tip end with an outer wall having a tapered cross              
          sectional configuration.”                                                   


               The appellants err in considering the references in less               
          than their entirety.  A reference must be considered as a                   
          whole for what it reveals “to workers in the art.”  Panduit                 
          Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1566, 1 USPQ2d                   
          1593, 1595 (Fed. Cir. 1987).  Here, Murai teaches an electrode              
          42.  Col. 3, l. 12.  Figure 2 shows that the tip end 42a of                 
          the electrode has a tapered cross sectional configuration.                  
          The reference’s tapered configuration would have suggested the              
          tapered cross sectional configuration as claimed.  Claim 16 is              
          not argued separately and falls with claim 17.                              


               For the foregoing reasons, the examiner has established a              
          prima facie case of obviousness.  Therefore, we affirm the                  
          rejection of claims 16 and 17.  Next, we address the                        
          obviousness of claim 18.                                                    


                                      Claim 18                                        







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