Appeal No. 1998-1735 Page 8
Application No. 08/339,980
(2) Whether a person of ordinary skill in the art would have recognized the
interchangeability of the elements shown in the prior art for the
corresponding elements disclosed in the specification. Al-Site Corp. v. VSI
Int'l, Inc., 174 F.3d 1308, 1316, 50 USPQ2d 1161, 1165 (Fed. Cir. 1999).
(3) Whether the prior art elements are the structural equivalents of the
corresponding elements disclosed in the specification. In re Bond,
910 F.2d 831, 833, 15 USPQ2d 1566, 1568 (Fed. Cir. 1990).
(4) Whether there are insubstantial differences between the prior art
elements and the corresponding elements disclosed in the specification.
IMS Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1436, 54
USPQ2d 1129, 1138-39 (Fed. Cir. 2000).
As a result of our review, we have determined that there is nothing in the record which
would support answering any of the above questions in the affirmative. This being the
case, we conclude that the prior art structure does not qualify as being an equivalent under
35 U.S.C. § 112, sixth paragraph, of the structure disclosed by the appellant in the
specification.
Since neither of the requirements set forth in Valmont has been met by Lenius, the
applied prior art fails to establish a prima facie case of obviousness with regard to the
subject matter recited in claim 4, and we will not sustain the rejection.
Dependent claims 5 and 6 stand rejected on the basis of the references applied
against claim 4 taken further in view, respectively, of Konermann and of VanErden or
Edge. None of these references overcome the deficiency we have pointed out above with
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007