Appeal No. 2001-0291 Page 8
Application No. 08/772,559
and In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970). In this instance, notwithstanding our conclusion that
claims 1-17 are indefinite, for the reasons discussed infra in
our new ground of rejection pursuant to 37 CFR § 1.196(b), we
are able to reach a determination that the rejections of
claims 1-17 under 35 U.S.C. §§ 102 and 103 are not
sustainable.
Turning first to independent claim 1, the examiner’s
anticipation rejections are based on the position that each of
Brown and Martin discloses the structure of the guardrail
barrier as claimed and that, as such, the quantitative
ranges/values for the various design parameters are inherent
in the structure (answer, pp. 4-6). In the alternative, even
if the quantitative ranges/values are not inherent, as the
rationale for the obviousness rejections, the examiner asserts
that “it would have been obvious at the time of the
[appellants’] invention to choose to design within the claimed
ranges as the use of optimum or workable ranges discovered by
routine experimentation is ordinarily within the skill of the
art” (answer, pp. 5 and 6).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007