Appeal No. 1999-0616
Application 08/443,152
Concerning the examiner’s theory of obviousness based
upon a conclusion that appellants’ claimed combination is an
obvious reversal of parts of the coupling taught by Moser,
while there is some support for this proposition in case law,
it is not a mechanical rule and its application was never
intended to short circuit the determination of obviousness
mandated by 35 U.S.C. § 103. See Ex parte Giles, 228 USPQ
866, 867 (Bd. Pat. App. & Int. 1985) (§ 103 rejection based on
obvious reversal of parts
reversed because evidence proffered by examiner is devoid of
teaching that would have suggested the particularly claimed
combination of elements set forth in claims); Ex parte Chicago
Rawhide Mfg. Co., 223 USPQ 351 (Bd. Pat. App. & Int. 1984)
(the mere fact that an ordinarily skilled artisan could
rearrange the parts of the reference device to meet the terms
of the claims is not by itself sufficient to support a finding
of obviousness; the prior art must provide a motivation or
reason for the artisan, without the benefit of appellants’
specification, to make the necessary changes in the reference
device). See also Ex parte Grasenick, 158 USPQ 624 (Bd. App.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007