Ex parte MUNEKI et al. - Page 6




          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                    
                                          6                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  Next 

Last modified: November 3, 2007