Ex parte FUTO et al. - Page 7

              Appeal No. 1999-1165                                                                      Page 7                 
              Application No. 08/753,174                                                                                       

              established when the teachings of the prior art itself would appear to have suggested the                        
              claimed subject matter to one of ordinary skill in the art.  See In re Bell, 991 F.2d 781, 782,                  
              26 USPQ2d 1529, 1531 (Fed. Cir. 1993).   For the reasons expressed above, it is our                              
              view that the applied references do not establish a prima facie case of obviousness with                         
              regard to the subject matter recited in claim 1, and we therefore will not sustain the                           
              rejection of claim 1 or, it follows, of claims 3-5 and 8-11, which depend therefrom.                             
                      The addition of Kolacinski, which was applied against dependent claim 7, does not                        
              cure the defect in Vollers.  The rejection of claim 7 is not sustained.                                          
                      We also will not sustain the rejection of independent claim 15, which recites the                        
              invention in somewhat different terms than claim 1, but includes the limitations found in the                    
              passages quoted above.  Likewise, the rejection of dependent claims 17, 20 and 21 is not                         
                      Nor will sustain the rejection of dependent claims 16 and 18, for the teachings of                       
              Vlasak and Pennington, additionally applied, respectively, to these two claims, also fail to                     
              overcome the problems with the primary reference.                                                                
                      None of the rejections are sustained.                                                                    
                      The decision of the examiner is reversed.                                                                

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

Last modified: November 3, 2007