Appeal No. 1998-2114
Application No. 08/491,286
the side of the housing as opposed to the rear would
have resulted through routine experimentation and
optimization, lacking any unobvious or unexpected
results. Further, this type of difference would
appear to deal with a mere shifting location of
parts, namely the opening, which has been held to
involve only routine skill, see In re Japikse, 86
USPQ 70 (CCPA 1950).
Appellants argue (brief, page 17) that although the
cartridge in Christie may pass through a side orientation, it
can be seen in Christie (Figure 2) that “the housing 30
includes solid sidewalls (generally in the location of
reference numerals 102, 104) which have no openings
whatsoever.” In response to the examiner’s statement that the
claimed invention involved nothing more than “routine
experimentation and optimization,” appellants argue (brief,
page 20) that:
Appellants’ invention, thus, is specifically
intended to address a disadvantage of the Christie
et al. system, i.e., that the window must be located
on a surface that is positioned 90 degrees from the
user interface surface. Appellants’ invention, as
recited in Claim 1, solves this problem by providing
an insertion apparatus having a housing with a side
opening. Accordingly, contrary to the Examiner’s
assertion, appellants’ provision of a side opening
is not “lacking any unobvious or unexpected
results”.
With respect to the citation of Japikse, appellants argue
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