Appeal No. 2003-0087 8
Application No. 09/512,164
a brake, and that there would be recognition of this fact from a consideration of Fontaine
by one skilled in the art.
As to the “attachment means” limitation of paragraph (e) of claim 1, clevis 34 of the
right end of Fontaine’s piston rod includes an elongated slot and is shown in Figure 7 as
being coupled to lever 52 by a pin (not numbered). We consider this slot and pin
arrangement as corresponding to the slot and pin connection disclosed by appellants6 for
accomplishing the function set forth in paragraph (e) for the attachment mean, such that
Fontaine’s slot and pin arrangement fully responds to the “attachment means” limitation of
paragraph (e) of claim 1.
Viewed in this light, Fontaine provides response for all limitations of claim 1, making
the teachings of Pierce mere surplusage in this rejection. While a rejection over a single
reference such as Fontaine would ordinarily be based on 35 U.S.C. § 102 rather than 35
U.S.C. § 103, the practice of nominally basing rejections on § 103 when, in fact, the actual
ground of rejection is that the claim is anticipated by the prior art has been sanctioned by a
predecessor of our present review court in In re Fracalossi, 681 F.2d 792, 794, 215 USPQ
569, 571 (CCPA 1982) and In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644
(CCPA 1974). For these reasons, appellants’ argument (main brief, page 10 ½)
6See page 10, lines 13-20 of appellants’ specification, as well as the showing in
appellants’ Figure 1 of a slot and pin connection between the piston rod and extension
lever 64 for moving the lever.
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