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).
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