Appeal No. 2002-2224
Application 08/923,103
corresponding disclosure) in view of King, Jr. (King).2 We refer to the examiner’s answer and to
appellants’ brief for a complete exposition of the opposing views of the parties.
In order to establish a prima facie case of obviousness, the examiner must show that some
objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in this art would have led that person to
the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellants’ disclosure. See generally, In re Rouffet, 149 F.3d 1350,
1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fine, 837 F.2d 1071,
1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469,
473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988).
The plain language of appealed claim 1 interpreted in light of the specification as it would
be interpreted by one of ordinary skill in this art, provides that the second feature arranged
around an outer surface of the shaft is configured to mate with the first feature arranged around
an inner surface of the opening wall of a washer “such that the washer is removable from the
shaft without breaking the washer or the shaft.” See In re Morris, 127 F.3d 1048, 1054-55,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997). Appellants submit that there is no factual support in
King for the examiner’s contention that the washer and shaft of King can be separated without
breaking (brief, page 11), and indeed, the examiner in stating the ground of rejection, alleges that
the washer and shaft of King can be separated, and in doing so, does not cite any evidence in
King (answer, page 5).
In responding to appellants’ argument in the brief, the examiner takes the position that the
subject claim language “is not a positive limitation but only requires the ability to so perform . . .
[and] does not constitute a limitation in any patentable sense,” and in this respect, contends that
the claim language does not require “that the washer and bolt actually be removed only that if
removed the bolt or shank will not break” (answer, page 9). However, the examiner further
states that
2 Answer, pages 3-5. We decide this appeal based on appealed claim 1 in view of appellants
grouping of the claims (brief, page 4). 37 CFR § 1.192(c)(7) (2002).
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