Appeal No. 1999-0704 Page 8
Application No. 08/558,661
the examiner's decision to reject claim 4. Like our affirmance of the rejection of claim 1, from
which claim 4 depends, we shall also designate our affirmance of the rejection of claim 4 as a
new ground of rejection under 37 CFR § 1.196(b).
Claim 14 also depends from claim 1 and further requires "a mirror-like smooth surface
having a surface roughness of not more than about 20µ" on at least one of the inner surface of
the tube and the contact portion of the fishline guide. In response to the appellants' argument6
on page 8 of the brief that Kelly fails to disclose this specific limitation, the examiner (answer,
page 5) concedes that Kelly does not disclose a surface finish of 20 microns but takes the
position that
it would have been obvious to provide a smooth surface to reduce friction
between the line and the inner surface of the rod and to reduce abrasion between
the inner surface of the rod and the line. It would have been obvious to employ
a surface roughness of about 20 microns and routine experimentation would
determine the best surface roughness.
As the appellants have not challenged the examiner's position, we shall also affirm the
examiner's decision to reject claim 14 as being unpatentable over Kelly, designating our
affirmance as a new ground of rejection under 37 CFR § 1.196(b) for the same reason
discussed above with regard to claim 1.
6We note that "said contact portion" lacks clear antecedent basis in the claim. While it is our opinion that
this informality does not render the claim indefinite, it is deserving of correction in the event of further prosecution
before the examiner.
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