Appeal No. 2003-0087 12
Application No. 09/512,164
railway vehicle braking system, as called for in claim 3. In this regard, the mere fact that
the prior art structure could be modified in the manner proposed by the examiner does not
make such a modification obvious unless the prior art suggests the desirability of doing so.
See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
For this reason, we will not sustain the standing rejection of claim 3. In that claim
14 positively recites that the piston rod “is joined with” an extension of the force transfer
lever of the railway vehicle braking system, our reasons for not sustaining the examiner’s
rejection of claim 3 apply to claim 14 as well. Hence, we also will not sustain the standing
rejection of claim 14.
Claim 4
Claim 4 depends from claim 1 and adds that the casing “includes an attachment
means[8] for mounting said braking assembly to said at least one of a brake beam and a
compression member.”
In accordance with In re Donaldson Company, 16 F.3d 1189, 1193, 29 USPQ2d
1845, 1849 (Fed. Cir. 1994), the “attachment means” limitation of claim 4 must be
interpreted in accordance with the sixth paragraph of 35 U.S.C. § 112, i.e., “construed to
cover the corresponding structure . . . described in the specification and equivalents
thereof.” The means for mounting the casing to the brake beam or compression member
8The “attachment means” of claim 4 is not the same attachment means as the
one set forth in paragraph (e) of claim 1.
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