Ex Parte KAGEYAMA et al - Page 8



                    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.                                                                                                               
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