Appeal No. 2002-1792 Page 11
Application No. 09/467,577
Even if it would have been obvious at the time the invention was made to a
person of ordinary skill in the art to form the separate parts of the guide rail system of
both Lenhart '307 and Fairman as one-piece, such does not result in the claimed
"elongate plate" since the resulting structure, in our opinion, would still not be a plate.
Additionally, we wish to point out to the examiner that there is no requirement in
35 U.S.C. § 103 for a claimed invention to present novel or unexpected results over the
prior art (e.g., the claimed invention does not have to perform better than the prior art).
For the reasons set forth above, the decision of the examiner to reject claims 1
to 19 under 35 U.S.C. § 103 is reversed.
REMAND
This application is being remanded to the examiner for consideration of the
following items: (1) while the subject matter of claims 9, 11 and 19 is not anticipated
under 35 U.S.C. § 102 by Lenhart '423 for the reasons set forth above, the patentability
of claims 9, 11 and 19 under 35 U.S.C. § 103 over Lenhart '423 alone, or in
combination with other prior art, should be evaluated; and (2) the patentability of claims
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