Appeal No. 1998-2139 Application No. 08/572,727 requirement in appellants' claim 13 that the spiral pattern of protrusions be formed by "monobloc forming", the examiner has taken the position (answer, page 4) that "monobloc forming" is a method of making that fails to impart patentability in an article claim, since the article may be formed by alternative methods. With respect to the specific dimensions set forth in dependent claims, the examiner relies only on each being found to be a choice of design determined through routine experimentation and further dependent on the size of the fishing rod. As to appellants’ arguments, we agree with appellants (brief, pages 7-8) that the examiner has failed to adduce any textual support for the assertion that it would have been “within the purview” of the skilled artisan to produce arc- shaped corners on the line-holding protrusion from Akiba or Harada. Appellants’ further argument that the mere asserted ability of the artisan to do something is not determinative of obviousness under 35 U.S.C. § 103, is also agreed with. The law is clear that "the mere fact that the prior art could be so modified would not have made the modification obvious 6Page: Previous 1 2 3 4 5 6 7 8 9 10 NextLast modified: November 3, 2007