Appeal No. 2001-2371
Application 09/318,259
the invention would perform equally well with holes throughout
the entire length of the casing. As these assertions form the
basis for the examiner’s conclusion that the hole positions
recited in claim 7 would have been an obvious matter of design
choice, such conclusion has no merit. In the same vein, the
discussion in the appellant’s specification of the problem
solved by the appellant’s invention and the lack of any
appreciation in the Japanese reference of such problem
undermine the examiner’s conclusion that the recited hole
positions involve a mere rearrangement of parts involving
routine skill in the art.
Hence, the disclosure of the Japanese reference does not
warrant a conclusion that the differences between the subject
matter recited in claim 7 and the prior art are such that the
subject matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill in
the art.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claim 7, and claim 8 which depends
therefrom, as being unpatentable over the Japanese reference.
II. The 35 U.S.C. § 103(a) rejection of claims 9 and 10
8
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