Appeal No. 1997-1314
Application No. 08/300,684
or suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W.
L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-13.
Thus, we will not sustain the 35 U.S.C. § 103
rejection of claims 3 and 9.
Looking at claims 5, 6, 11 and 12, which recite
specific dimensions for the ribs, such as a width of about
0.15 inches and a height of about 0.025 inches, Appellants
argue the references provide no such dimensions, and that
those claimed “provides particularly good results.” (Brief-
page 8.)
The Examiner’s position is that the sizes recited
are not patentably significant since the Appellants’
disclosure fails to show such limitations solve any stated
problem or yield any unobvious advantage, and are a matter of
design alternatives. (Answer-pages 4 and 5.)
A claimed limitation is an obvious design choice
where such limitation presents no new or unexpected result and
solves no stated problem and would be an obvious matter of
10
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