Appeal No. 1997-3709
Application 08/582,034
the ordinary skilled worker and is functionally equivalent to
any other known geometric shape” (answer, page 4) is
insufficient. Moreover, the examiner’s attempt to ignore4
those portions of Herbulot that teach against the claimed
invention is not well taken. See W. L. Gore and Associates,5
Inc. v. Garlock, Inc., 721 F.2d 1540, 1550, 220 USPQ 303, 311
(Fed. Cir. 1983) (it is error to consider references in less
than their entireties, disregarding disclosures therein that
diverge from and teach away from the invention at hand).
In the present situation, the differences in construction
and purpose of Wirth and Herbulot belie their combination in
the manner proposed, and instead indicate to us that they
4The test for obviousness under 35 U.S.C. § 103 in not
what is “within the level of the ordinary skilled worker.”
Rather, the test for obviousness is what the combined
teachings of the references would have suggested to those of
ordinary skill in the art (In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981)). Further, the mere existence
of functional equivalency does not establish obviousness
within the meaning of 35 U.S.C. § 103 (In re Flint, 330 F.2d
363, 367-68, 141 USPQ 299, 302 (CCPA 1964)).
5Namely, the circumstance that each of the portions 19,
20 and 21 of Herbulot’s Figures 5 and 6 embodiments have a
common center axially extending dimension.
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