Appeal No. 2003-1426 Page 6
Application No. 09/635,638
to provide this factor with a value of 530-750. These shortcomings in the rejection
cause it not to be sustainable.
We also find persuasive the appellants’ argument on pages 7-9 of the Brief that
the requirement in claim 1 regarding the S1/S2 2 relationship is not taught by the applied
references. Here the examiner again has relied upon measurements made on
Moriyama’s Figure 7, the impropriety of which we have discussed above. Particularly
compelling in the appellants’ arguments are the pictorial presentations on page 8 of the
Brief demonstrating that the examiner’s reasoning on this issue is defective because
dimples having the same diameter and height do not necessarily have the same cross-
sectional area. In addition, as was the case above, neither of the applied references
directs one of ordinary skill in the art to utilize the S1 and S2 factors in the manner
recited in the claim. The rejection thus also fails on this ground.
It therefore is our conclusion that the combined teachings of Melvin and
Moriyama fail to establish a prima facie case of obviousness with regard to the subject
matter recited in claim 1, and we will not sustain the rejection of claim 1 or of claims 2, 3
and 5-10, which depend therefrom.
2Factor S1 is defined in claim 1 as the area of the cross-sectional shape of a dimple at its center,
and factor S2 as multiplying a dimple diameter by a dimple depth.
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007