Appeal No. 2001-1454
Application No. 08/412,118
configuration recited in claim 24. Appellants again argue that the examiner has found
obviousness of the claimed invention based on the examiner’s own unsupported
statements rather than on evidence [brief, pages 11-12].
The examiner responds that the claimed thicknesses of the insulation and the
wires would have been an obvious matter of design choice [answer, page 9].
We do not sustain the examiner’s rejection of independent claim 24 because the
examiner has again failed to establish a prima facie case of obviousness for the same
reasons discussed above. The particular relationship of the thicknesses of the wires
and the insulation recited in claim 24 cannot simply be dismissed by the examiner as an
obvious matter of design choice. The examiner should not, in general, rely on per se
rules of obviousness such as a change in size is always obvious. The examiner should
consider the specific recitations of the claims and the specific teachings of the applied
prior art and provide a cogent analysis as to why the proposed modification of the prior
art would have been obvious within the meaning of 35 U.S.C. § 103.
We now consider the rejection of claims 19-21, 23 and 26 based on the teachings
of Plummer, Fry ’848 and Fry ’428. Plummer and Fry ’848 are applied as noted above.
The examiner cites Fry ’428 as teaching the use of wires having different diameters for
a wire harness. The examiner again asserts that the specific claimed thicknesses of
the wires and the insulation would have been within the level of ordinary skill in the art
[answer, pages 5-6].
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007