Appeal No. 1998-0340
Application 08/449,682
Rejection under 35 U.S.C. § 103
Claim 4 is rejected as being obvious over Inaba. The
Examiner contends [answer, page 3] that “[i]t would have been
an obvious matter of design choice to mount the antenna to an
interior side of a roof of a vehicle, since applicant has not
disclosed ... any particular purpose and it appears that the
invention would perform equally well with the antenna being
mounted to a window of a vehicle as taught by Inaba et al.”
Appellant argues [brief, page 5] that “the Patent Examiner has
engaged in impermissible piecemeal reconstruction of
Applicant’s invention.” Appellant further argues [reply
brief, page 2] that “since the entire Inaba et al. patent is
directed to a ‘vehicle window glass antenna using transparent
conducting film’, to discard the glass sheets as suggested by
the Examiner would be entirely contrary to the teachings of
the Inaba et al. patent.”
Here we are persuaded by Appellant’s arguments. The
Examiner has not presented any evidence, other than alleging
that it would be “a matter of design choice”, to modify Inaba
to meet the structure recited in claim 4. It appears to us
that the Examiner is indulging in reconstructing the claimed
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