Appeal No. 2001-1692
Application No. 09/116,338
doing so. See In re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988).
Moreover, the Examiner’s reliance on In re Harza is inappropriate on this record because he
has not established that the basic structure of the claimed invention is not patentably
distinguishable from that taught by Bonicel. See Harza, F2d 671, USPQ 380. (“The only
distinction to be found is in the recitation in claim 1 of a plurality of ribs on each side of the
web whereas Gardner [cited prior art] shows only a single rib on each side of the web.”) In the
present case, there are numerous differences in the structure of Bonicel and the claimed
invention. The Examiner has chosen to duplicate only specific portions of the Bonicel
process. Specifically, the Examiner recognizes that the claimed invention requires a plurality
of ribbons to be set by use of a single means. To remedy this deficiency, the Examiner asserts
“the practitioner will realize that some parts must be duplicated while others need not be
duplicated.” (Answer, p. 9.) We agree with Appellants, Reply Brief page 2, that this is mere
conjecture by the Examiner. The Examiner has not directed us to any teaching or suggestion
in Bonicel for duplication of any portions of the disclosed method. Again, it appears the
Examiner has reached this conclusion base upon impermissible hindsight derived from
Appellants’ own disclosure.
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