Appeal No. 2000-1651 Application No. 08/871,923 This argument by the examiner is not persuasive. In order to distinguish the claims over the prior art, an applicant is not required to recite the advantages flowing from the claimed invention; rather, the claims must include the structure which provides those advantages. Cf. In re Peterson, 390 F.2d 735, 741-42, 156 USPQ 504, 509 (CCPA 1968) (claims not patentable because not limited to the structure which will provide asserted unexpected results). Here, claim 15 is limited to the structure which provides the asserted advantages over the prior art, in that it recites that the lower and upper longitudinal members each comprise a metal tube of circular cross-section. In the absence of any evidence that the circular cross-sectional shape of the longitudinal members would have been obvious, which evidence the examiner has not cited,2 the asserted advantages resulting from use of a circular cross-sectional shape preclude the examiner's implicit conclusion that that shape would have been merely an 2 "A rejection based on section 103 must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art." In re GPAC, Inc., 57 F.3d 1573, 1582, 35 USPQ2d 1116, 1123 (Fed. Cir. 1995). 5Page: Previous 1 2 3 4 5 6 7 8 9 10 11 NextLast modified: November 3, 2007