Appeal No. 1998-2657
Application No. 08/659,359
Rejection (2) - Under 35 U.S.C. § 103
We have rejected claims 1 and 3 to 5 above as failing to
comply with § 112, second paragraph. Generally, if claims are
rejected on that basis, a rejection under § 103 is
inappropriate.
See In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA
1962). However, in order to avoid piecemeal appellate review,
we will interpret the expression "parallel to and passing
through" in claim 1 as if it were "containing," and proceed to
consider the § 103 rejection on that basis. Cf. Ex parte
Ionescu, 222 USPQ 537, 540 (Bd. Apps. 1984).
The basis of this rejection, as stated by the examiner on
pages 6 and 7 of the answer, is:
In the instant application, the art (Terry)
teaches the use of a laser with a putting practice
device to help the golfer line up a putt. It is the
examiner's opinion that one of ordinary skill in the
art would have found the use of a laser for the
purpose of lining up a putt valuable on other
putting practice devices such as Brandell's. The
motivation to combine comes from the recognized
advantage in the prior art as typified by Terry of
using a laser to line up a putt.
We do not disagree with the broad proposition that it would
have been obvious to use the Terry device in conjunction with
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