Appeal No. 1999-2699
Application No. 08/884,049
teachings of Scott and Waddington would not suggest the claimed invention. (See brief at
pages 5-6.) We agree with appellant. Specifically, appellant argues that:
[t]he final rejection states (page 3, 2nd paragraph) that Scott's aperture area
56 corresponds to the claimed "threadless region". That is incorrect
because the coil 28 does not engage threadless area 56 as required by the
pending claims (e.g claim 1, lines 12-13). Instead the large end 30 of Scott's
coil 28 only engages the threaded section 36 after the coil has been inserted
into the shell (column 1, line 59, et seq.) .
The final rejection also erroneously contends that Scott suggests
adding threads to aperture area 42 in the Waddington et al. connector.
However, if the teachings of the references were combined at best the
threaded region 36 of Scott would be added to Waddington et al. for
engagement by the turns at the large end of coil 14. That still would not
suggest providing threads at the inward aperture area 42 which is not
contacted by the middle of the coil. Furthermore adding threads for the large
end of the coil teaches away from the presently claimed structure in which
the large coil end engages a threadless aperture region.
We agree with appellant. From our understanding of the examiner’s rejection, the
examiner has found various mix and match parts of the claimed invention in the teachings
of Scott and Waddington, but the examiner has provided neither a teaching nor a
suggestion in the prior art to modify the references nor has the examiner provided a
separate convincing line of reasoning why one skilled in the art would have been motivated
to make the invention as recited in the claims.
The examiner maintains that Scott teaches the threaded and non-threaded portions
adjacent to each other and that the threaded portion will engage the coil when
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