Appeal No. 2003-1592
Application 09/492,032
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in combined teachings of Biondo and Estes,
Shanks ‘941, Saaf and/or Lee as applied in the grounds of rejection with appellants’
countervailing evidence of and argument for nonobviousness and conclude that the claimed
invention encompassed by appealed claims 1 through 11, 19, 28 through 31 and 43 through 47
would have been obvious as a matter of law under 35 U.S.C. § 103(a).
We do not reach the same result with respect to appealed claims 12 and 17. The
examiner has included Shank ‘765 in the combination of references applied to these claims.
Appellants contend that this reference discloses a sliding shelf structure and not a drawer
(brief, page 12). While the examiner initially found that Shank ‘765 disclosed a slidable
“drawer” assembly (answer, page 5), in response to appellants’ argument, the examiner
“acknowledges Shank discloses a sliding self structure” but contends that “Shank is of a
similar problem solving area, namely sliding mechanisms for pull out devices” (id., page 11).
Appellants respond that the reference does not disclose a slidable drawer assembly (reply brief,
page 5).
We determine that while there is some similarity between a shelf and a drawer, we find
no disclosure in Shank ‘765 which would have suggested to one of ordinary skill in this art that
the slide mechanism specific for a shelf as disclosed therein would be applicable to a drawer,
and the examiner has not provided any scientific reasoning or objective evidence in support of
the contention that the sliding mechanism of the reference is applicable to “pull out devices”
generally, including a drawer. Accordingly, in the absence of such reasoning or evidence, the
examiner has not established a factual foundation in support of the grounds of rejection
involving appealed claims 12 through 15, 17 and 26, and in the absence of a prima facie case,
we reverse these grounds of rejection. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47
USPQ2d 1453, 1458 (Fed. Cir. 1998)\ (“hindsight” is inferred when the specific understanding
or principal within the knowledge of one of ordinary skill in the art leading to the modification
of the prior art in order to arrive at appellant’s claimed invention has not been explained).
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
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