Appeal No. 1999-1523 Page 11
Application No. 08/839,065
We agree with the appellant that the examiner has failed
to establish a prima facie case of obviousness for claims 4
and 5. In that regard, it is our determination that the
claimed limitation of claim 4 (i.e., said connector is formed
as a single-piece from a casted piece of metal) would not have
been obvious to one of ordinary skill in the art at the time
the invention was made from the teachings of the applied prior
art (i.e., Rensch alone or combined with Hollis). In
addition, we note that the examiner incorrectly drew from case
law turning on specific facts, a general obviousness rule:
namely, that forming several pieces integrally as a single-
piece is not considered to be patentable subject matter. No
such per se rule exists. The examiner's citation (answer, p.
8) of In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965) or
any other case as a basis for rejecting claims that differ
from the prior art by reciting a single-piece is improper, if
it sidesteps the fact-intensive inquiry mandated by 35 U.S.C.
§ 103. Thus, in this case, one must determine if it would
have been obvious to one of ordinary skill in the art at the
time the invention was made to make Rensch's connector as a
single-piece. We think not for the reasons expressed by the
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