Appeal No. 2003-0087 15
Application No. 09/512,164
The examiner’s position is not well taken. First, the examiner has not specifically
identified, and it is not apparent to us, precisely what element or elements of Graham the
examiner regards as corresponding to the claimed “stop means.” In this regard, element
146 in Figures 3A and 5-7 of Graham (the examiner’s “cylindrical member”) is a threaded
shaft having a hand wheel 142 at one end and a release plate 144 at the other end, and
its relevance to the actuator of Fontaine is not understood. Second, it is not clear, based
on the teachings of the applied references, why one of ordinary skill in the art would
consider it desirable, and thus obvious, to provide a stop means of the type called for in
claim 9 in the actuator of Fontaine. In this regard, the motivation for the proposed
modification must come from the teachings of the prior art and not appellants’ own
disclosure.
For the foregoing reasons, we conclude that a prima facie case of obviousness has
not been made out as to claim 9, or claim 10 that depends therefrom. In that independent
claim 18 contains limitations similar to those of claim 9 with respect to the stop means, we
conclude that a prima facie case of obviousness also has not been made out as to claim
18. It follows that we cannot sustain the examiner’s rejection of claims 9, 10 and 18.
Conclusion
The rejection of claims 1-5, 8 and 12-17 as being unpatentable over Fontaine in
view of Pierce is affirmed with respect to claims 1, 2, 5, 8, 12, 13 and 15-17, but is
reversed with respect to claims 3, 4 and 14.
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