Appeal No. 1997-1737 Page 5
Application No. 08/330,168
then ascertained that the combined teachings of the three
patents did not arrive at the claimed invention since the
claimed "height" of the bushing as set forth in the claims2
under appeal (e.g., greater than about 0.2 inch and less than
about 0.65 inch) was not taught. The examiner has not cited
any evidence as to why it would have been obvious at the time
the invention was made to a person having ordinary skill in
the art to have modified the applied prior art to arrive at
the claimed invention. Instead, the examiner found that the
appellants did not disclose any new or unexpected results due
to the height difference between the rejected claims and the
applied prior art and then determined (answer, p. 5) that it
would have been obvious to make the bushing in a smaller or
larger size. However, it is well established that the mere3
fact that a difference between the teachings of the prior art
and the claimed subject matter does not provide any new or
2The "height" of the bushing is measured from the top
surface of the orifice plate to the bottom surface of the
flange.
3We note that the examiner never determined that the
claimed "height" would have been obvious at the time the
invention was made to a person having ordinary skill in the
art.
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007