Appeal No. 2002-0312 Page 8
Application No. 08/953,922
The examiner’s attempt on pages 8-15 of the Answer the explain why these
considerations are not valid and why one of ordinary skill in the art would have found it
obvious to modify the Hydra-scoop reference to the extent necessary to meet the
requirements of claim 1 is not persuasive, but amounts to merely countering the
appellants’ assertions that certain features are not present in the references and that
suggestion to combine the references in the manner the examiner proposes is lacking,
with the examiner’s unsupported opinion that such is not the case.
It is the examiner’s duty to establish a prima facie case of obviousness based
upon evidence (Uniroyal, Inc. v. Rudkin-Wiley Corp., supra), and in our view this
obligation has not been met with regard to claim 1 by the teachings of Hydra-scoop and
Cummins. It would appear that the only suggestion to combine the references in the
manner proposed by the examiner is found in the hindsight afforded one who first
viewed the appellants’ disclosure; this, of course, is not a proper basis for a rejection
under Section 103. In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed.
Cir. 1992). We therefore will not sustain this rejection of claim 1.
One or more of the requirements recited in claim 1 and discussed above are
present in each of the other independent claims before us and, considering the
deficiencies in the structures disclosed in Hydra-scoop and Cummins and the lack of
suggestion to combine the references in the manner proposed by the examiner, we also
will not sustain this rejection of claims 2-4 and 7-20.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007