Appeal No. 1998-0560
Application 08/527,957
The Examiner provides no factual evidence why one of
ordinary skill in the art would have been motivated to
reduce the diameter of the industry standard 89 mm hub.2
Bare assertions at the argued point of novelty are not
persuasive. As to the argument that one of ordinary skill
in the art could determine the size by routine
experimentation, the Examiner has not provided any evidence
that there was some known problem or other reason why one of
ordinary skill would have been led to experiment to reduce
the size of the hub. Here, Appellants state that they
discovered the problem that led to the solution of a smaller
diameter hub (specification, page 3, lines 13-22).
Patentable invention may lie in the discovery of the source
of the problem even though the remedy may be obvious once
the source of the problem is identified. See
In re Sponnoble, 405 F.2d 578, 585, 160 USPQ 237, 243 (CCPA
1969). The prior art was apparently satisfied with the
29.0 mm diameter hub and the Examiner has provided no
evidence of a motivation to experiment with the diameter.
That 29 mm is the industry standard hub diameter is2
established by the documents in Appellants' Information
Disclosure Statement (Paper No. 7) filed November 4, 1996.
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007