Appeal No. 1999-1818 Page 8
Application No. 08/586,806
For the foregoing reasons, we shall sustain the examiner's rejections of claim 1 as being
unpatentable over Macura in view of Enda and as being unpatentable over Macura in view of
Sugiyama.
With regard to claim 2, which depends from claim 1 and further requires that the
aluminum alloy is an aluminum-magnesium-silicon based alloy, the examiner contends that it
would have been an obvious matter of design choice to use such an alloy as the push rod body
material, "since the selection of a known material based on its suitability for the intended use is
generally recognized as being within the level of ordinary skill in the art" (answer, pages 4 and
5). From our perspective, one of ordinary skill in the art would have appreciated from the5
teachings of Macura the desirability of using a push rod body material which is relatively light
weight, reasonably strong and easily weldable and, further, would have recognized an
aluminum-magnesium-silicon based alloy as a material possessing such properties. Therefore,
we perceive no error in the examiner's determination that the use of such an alloy in the
Macura push rod would have been obvious. Accordingly, we shall sustain the examiner's
rejections of claim 2 as being unpatentable over Macura in view of Enda and as being
unpatentable over Macura in view of Sugiyama.
As the appellants have not argued separately the patentability of claims 3-5 apart from
claims 1 and 2, these claims shall stand or fall with claims 1 and 2 from which they depend (see
5The selection of a known material based upon its suitability for the intended use is an obvious design
consideration within the skill of the art. In re Leshin, 227 F.2d 197, 199, 125 USPQ 416, 418 (CCPA 1960).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007