Appeal No. 1999-1813 Page 6
Application No. 08/801,010
vehicles crossing said tapering section.” This is one of the stated objectives of the
appellant’s invention (specification, page 4), and the appellant’s disclosure includes a
representation that this objective is accomplished by tapering the inventive transition
support in the manner recited in claim 1 (see original claim 3 and page 7 of the
specification, as amended). Thus, from our perspective, the specific limitation regarding
the taper of the appellant’s device is not merely a matter of design choice, as the examiner
has stated, but constitutes a solution to a problem existing in the art. In the absence of
evidence to the contrary, it is our view that the only suggestion to modify the Bell nosing
strip in the manner proposed by the examiner is found in the luxury of the hindsight afforded
one who first viewed the appellant’s disclosure. This, of course, is not a proper basis for a
rejection under Section 103. In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784
(Fed. Cir. 1992).
We therefore conclude that the teachings of Bell fail to establish a prima facie case
of obviousness with regard to the subject matter recited in claim 1, and we will not sustain
the Section 103 rejection of claim 1 or, it follows, of claims 4 and 8-11, which depend
therefrom.
Claims 5 and 6 stand rejected on the basis of Bell and Donovan, the latter being
cited for teaching the use of vinyl, which is one of the materials recited in claims 5 and 6
from which the support of claim 1 is made. Be that as it may, Donovan does not cure the
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007