Appeal No. 2003-1502 Page 6
Application No. 09/365,860
From his remarks, it would appear that the examiner is contending that the two forms of
wire ring elements are considered to be equivalents in the art, but no evidence in
support of this conclusion has been provided. Nor has the examiner set forth a reason
why one of ordinary skill in the art would have been motivated to make the substitution
of elements proposed in the rejection.
In the absence of a teaching, suggestion or incentive which would have led one
of ordinary skill in the art to make the proposed modification, it is our view that of Inoue
‘197 fails to establish a prima facie case of obviousness with regard to the subject
matter recited in claim 1, and this rejection of claims 1, 2, 5 and 10 cannot be
sustained.
The Section 102 Rejection Based Upon Inoue ‘671
This rejection applies to claim 52, which also requires that the annular resilient
element be “formed from a plurality of windings of wire.” The examiner has taken the
position that this reference teaches the windings “to the extent required,” and refers to
Figures 2, 16, 18, 19 and 23, as well as column 7, line 40 to column 16, line 49, as
providing the basis for this conclusion.3 In our opinion, Inoue ‘671 fails to anticipate the
claimed subject matter for the same reasons expressed above with regard to the
Section 102 rejection based upon Inoue ‘179, and this rejection is not sustained.
3We note in passing that the examiner has not directed us to any specific passages in the text of
this reference which might support his position, but merely refers us to five of the thirty-three figures in the
drawings, and ten of the twelve columns of the specification that are directed to describing the invention.
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