Appeal No. 2003-0693
Application No. 09/006,248
Appellants argue, among other things, that none of the applied
references discloses the requirement of claim 1 that “at least one
of said arms hav[e] an elongated dimension greater than any
unidirectional dimension of said base.” The examiner takes the
position that the claimed dimensional relationship between the arms
and the base is “an obvious matter of design and/or choice with one
arrangement providing no unobvious result over another” (answer,
page 6). The examiner also contends (answer, page 10) that “[i]t
is well known to eliminate structure and function. In this case it
would have been . . . [obvious to eliminate] the base and arms and
their function to the right of the first two arms in Blatt ‘276
figure 1.”
In short, the cited references do not provide the factual
basis necessary to support the examiner’s conclusion of
obviousness. The recited dimensional relationship of the arm to
the base is disclosed in appellants’ specification in the paragraph
spanning pages 2 and 3 as solving asserted problems of rigidity,
compactness and reduction in the volume of fluid consumed. Thus,
this limitation may not be dismissed as an obvious matter of design
choice without supporting evidence (compare In re Kuhle, 526 F.2d
553, 555, 188 USPQ 7, 9 (CCPA 1975).
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