Interference No. 104,158
manufacture must be held to be a mere designer’s choice,
obvious as well within the ordinary skill in this art. Since
the subject matter of claim 7 would have been obvious from the
prior art, including the references stated above, in
combination with Althaus claims 1-6, under the 37 CFR §
1.601(n) test, claim 7 is properly designated as corresponding
to the count.
Althaus Claim 9
In his decision on motions, the APJ determined that
the subject matter of claim 9 was directed to a separate
patentable invention. We review the showing by Althaus that
was a basis for the motion granted by the APJ. The test for
separate patentable invention is the already articulated 37
CFR § 1.601(n).
The reason given by the APJ was that the subject
matter of guide rails would not have been an obvious inclusion
on the razor of Althaus’ claims 1-6. However, as we have
noted above, Kirk, Terry and Ishida all show guide rails to be
conventional in
18
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007