Appeal No. 2004-0046 Page 9
Application No. 10/001,313
The appellant argues (brief, pp. 5-6) that (1) there is no suggestion in the applied
prior art for a person of ordinary skill in the art to have modified Emery to arrive at the
claimed subject matter of independent claims 1 and 10; and (2) that Emery teaches
away from the claimed subject matter of independent claims 1 and 10. We find
argument (1) unpersuasive since we believe that the applied prior art does provide
sufficient suggestion/motivation for a person of ordinary skill in the art to have modified
Emery to arrive at the claimed subject matter of independent claims 1 and 10 for the
reasons set forth above. As to argument (2) , Emery's teaching of a preferred
embodiment does not constitute a teaching away. See In re Susi, 440 F.2d 442, 446 n.
3, 169 USPQ 423, 426 n.3 (CCPA 1971) and In re Dunn, 349 F.2d 433, 438, 146
USPQ 479, 482-83 (CCPA 1965). As to the specific question of "teaching away," our
reviewing court in In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir.
1994) stated "a reference will teach away if it suggests that the line of development
flowing from the reference's disclosure is unlikely to be productive of the result sought
by the applicant." In this case, Emery does not teach or suggest that a flat rim
extension would not work. Instead, Emery teaches that a rim extension with a channel
to act as a gutter or trap would be preferred.
For the reasons set forth above, the decision of the examiner to reject claims 1
and 10 under 35 U.S.C. § 103 is affirmed.
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