Appeal No. 2000-2087 Page 5
Application No. 09/039474
We reach the same result with regard to the high energy magnet that is recited with
specificity in claim 1 and is explained in detail and compared with “conventional”
permanent magnets on page 3 of the appellants’ specification. With regard to this
limitation, the examiner concluded in the final rejection that a “high energy” permanent
magnet was disclosed by Palomera. However, he did not point out where this teaching
appears in the reference, nor did he respond to the appellants’ argument that the
Palomera magnet is precisely the type over which the claimed magnet is an improvement.1
Finally, the claimed “protection ring” is not disclosed or taught in either of the
applied references, notwithstanding the examiner’s indication in the final rejection that it is
shown in Figure 2 of Palomera. The examiner has chosen not to respond to the arguments
raised by the appellants on this issue in the Brief.
For the reasons set forth above, it is our conclusion that the combined teachings of
Palomera and Newbrough fail to establish a prima facie case of obviousness with regard
to the subject matter recited in claim 1, and we therefore will not sustain the standing
rejection of claims 1, 3 and 4.
REMAND TO THE EXAMINER
This application is remanded to the examiner for action on the following matters:
1Palomera states in lines 15-17 of column 3 that the magnet “comprises a natural
magnet which is a configuration routinely marketed in hardware and home improvement
centers.”
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