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
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