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.
88
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