Appeal No. 1997-4077
Application No. 08/441,989
The examiner adds that “since the oxide film is naturally
occurring the stainless steel seal/retainer will inherently
tarnish with time thus providing a distinct color” (final
rejection, page 4).
We cannot support the examiner’s position. We are
informed by appellants' specification (pages 1 and 2) that in
prior art
pipe joints it is difficult to discern whether or not the
gasket is provided between the end faces of the two joint
members because the joint members and gasket are similarly
colored. Accordingly, the claimed pipe joint solves a known
problem in the art. Compare In re Kuhle, 526 F.2d 553, 555,
188 USPQ 7, 9 (CCPA 1975) wherein the court indicated that the
rationale of "obvious matter of design choice" applies when a
modification is made which "solves no stated problem.”
Therefore, we do not agree that the examiner has a valid basis
for asserting that it would have been an obvious matter of
"design choice" to coat the gasket or retainer with an oxide
film or resin.
We note further that Yamaji is silent with respect to the
material used to make the joint members 3, 4, the gasket 5 and
13
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