Appeal No. 1999-2509
Application 08/752,917
I respectfully disagree with the majority’s reversal of the examiner’s § 103 rejection of
claims 14-25, 38, 39, 41 and 42 as being unpatentable over Pelletier in view of Cloud and, if
necessary, appellant’s admission at page 4 of the specification. While I concur with the
majority’s conclusion in affirming the examiner’s § 103 rejection of the appealed claims before
us based on Mackey, I would do so on a different basis. In this regard, I disagree with the
majority’s implicit reversal of the examiner’s § 103 rejection of claims 14-25, 38, 39, 41 and 42
as being unpatentable over Mackey taken with Kehoe, Wedin or Butcher with or without the
admitted prior art.12 Moreover, I disagree with the majority’s reasoning and reliance on
statements in appellant’s reply brief as implicit support for the majority’s view as to what
Mackey teaches in affirming the examiner’s § 103 rejection of claims 14-25, 38, 39, 41 and 42 as
being unpatentable over Mackey in view of either Kehoe, Wedin or Butcher, each, if necessary,
in view of appellant’s admission at page 4 of the specification, while denominating their
affirmance as a new ground of rejection under 37 CFR § 1.192(c)(7)(1997).
Upon careful consideration of the opposing arguments presented on appeal, I concur with
the examiner that the claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of 35 U.S.C. § 103 in view of the applied prior art. More specifically,
I consider the reference evidence adduced by the examiner when considered together with the
examiner’s analysis to have set forth a reasonable basis for concluding that one with ordinary
skill in the art would have combined the applied prior art teachings in a manner so as to thereby
result in a product which corresponds to the here claimed product. The arguments set forth in the
briefs expose no reversible error on the examiner’s part in reaching this obviousness conclusion.
Accordingly, it is my judgment that both of the examiner’s § 103 rejections should be sustained.
While the appealed claims describe the product, at least partially, in terms of the method
by which it is made, it is the finished product, not the method of making the product, that is the
appropriate focus of inquiry since the patentability of such claims is determined based on the
product itself. See In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985) ("If the
12 In denominating their affirmance as a new ground of rejection under 37 CFR §
1.192(c)(7)(1997), the majority implicitly reverses the examiner’s § 103 rejection based on
Mackey together with the other cited secondary references and admitted prior art.
- 15 -
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007