Appeal No. 2001-2353 Application No. 09/411,370 the adapter, as appellants have described in their specification.3 In light of the foregoing, we will not sustain the examiner's rejection of claims 2 and 3 under 35 U.S.C. § 112, second paragraph. Regarding the examiner's rejection of claims 1 and 2 under 35 U.S.C. § 103 as being unpatentable over Kageyama, we find that we are in agreement with appellants' position as set forth in the brief and reply brief. According to the examiner, it would have been obvious for one of ordinary skill in the art to add a rear chuck to the mechanical pencil of Kageyama "in light of what applicant [sic] has admitted is prior art in this respect [i.e., in the specification, page 1, lines 10-12]" (answer, page 5). However, in our opinion, the mere fact that double-chuck mechanical pencils existed in the prior art provides no teaching, 3 We understand the requirement of the push cap being detachably fitted "in" a rear portion (claim 3) or "in" an upper portion (claim 4) of the support member, within the context of appellants' invention, to encompass the arrangement seen in Figures 8, 9, 10 and 11, wherein the cap is actually detachably fitted on the support member (17). Appellants may wish to clarify this aspect of their invention in any further prosecution of the application before the examiner. 88Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 NextLast modified: November 3, 2007