Appeal No. 2003-1645
Application 09/803,720
applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill in
this art would have led that person to the claimed invention as a whole, including each and every
limitation of the claims arranged as required by the claims, without recourse to the teachings in
appellant’s disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453,
1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992); In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed. Cir. 1989);
In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988).
Even a cursory comparison of the elements of the claimed cable reel level winding device
arranged as required in the appealed claim 1,3 as interpreted in light of the written description in
the specification and the specification drawings, and the elements of the line-distributing device
for reels disclosed by Welch (e.g., page 1 and FIGs. 1-4), supports appellant’s contentions that
the examiner has failed to read Welch on a number of claim elements arranged as required,
including, inter alia, the cam and cable guide arm arrangement as specified in appealed claim 1
(brief, pages 4-6; reply brief, pages 1-3). The examiner advances three reasons in support of the
position that the apparatus disclosed by Welch has “substantially all the claimed features”
(answer, page 3).
We find it necessary to our decision to discuss only the third reason advanced by the
examiner. The examiner contends that the line guide structure of Welch reads on the cable guide
structure of appealed claim 1 (answer, page 4). To place the examiner’s position in perspective,
we find that in Welch FIGs. 2-5, line guide arm 20 contains head 24 that travels in cam groove
18, is attached by pin 23 in slot 21 of pillar 22, and has eye 26 for the line. The line guide arm 20
moves back and forth at a constant speed with the rotative force applied by crank 16, pivoting at
pin 23 (page 1, lines 44-90). The clauses of appealed claim 1 involved here read as follows:
a cam follower in said [cam] groove and driven thereby, an arm carrying said cam
follower and oscillated back and forth thereby,
3 We decide this appeal on appealed claim 1 because appellant states in the brief (page 3) that the
appealed claims “stand or fall together” and the examiner agrees (answer, page 2) 37 CFR
§ 1.192(c)(7) (2002).
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