Appeal No. 1998-2827
Application 08/614,494
unsuitable for its purpose of allowing bone wastes resulting
from threading of the implant into the bone to be discharged,
as intended by Dury (column 5, lines 44-47), thus presenting a
disincentive to the modification proposed by the examiner.
See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984); Ex parte Rosenfeld, 130 USPQ 113, 115 (Bd. App.
1961).
In light of the foregoing, we will not sustain the
examiner’s rejection of claims 9 and 10 as being unpatentable
over the combined teachings of Dury and Sparkes.
Concerning the rejection of claims 12 and 13 as being
unpatentable over Dury in view of Sparkes and further in view
of Niznick, the Niznick reference additionally applied in this
rejection does not render obvious what we have found to be
lacking in Dury and Sparkes. Accordingly we also will not
sustain this rejection.
New Rejection
Pursuant to 37 CFR § 1.196(b), we enter the following new
ground of rejection.
Claims 9-13 are rejected under 35 U.S.C. § 112, second
9
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