Appeal No. 1998-2907
Application No. 08/471,748
We have carefully considered the claims, the applied
prior art references, and the respective positions articulated
by appellants and the examiner. As a consequence of our
review, we will reverse the obviousness rejection of claims 1
through 22 and 24 through 41.
We substantially agree with appellants' arguments with
the following embellishments. The examiner misinterprets
appellants' argument regarding the combinability of AAPA with
Roylance and Greiff as an assertion that the references are
non-analogous. As such, the examiner never responds to the
argument. The examiner should understand the difference.
Specifically, references are non-analogous if not from the
same field of endeavor and not pertinent to the problem solved
by appellants. See In re Clay, 966 F.2d 656, 658, 23 USPQ2d
1058-59, 1060 (Fed. Cir. 1992). On the other hand, references
may meet the criteria set forth in Clay and not be combinable.
For example, one reference may teach away from the
modification suggested by the other or there may be no
suggestion in the references to combine.
In the present case, Roylance teaches away from using
adhesive for sealing the cap to the die, as required by claims
3
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