Appeal No. 2003-1862
Application No. 29/153,657
to the other. On the other hand, appellant asserts that the examiner has not established
a prima facie case of obviousness, principally based upon that the assertion that there
is no motivation within 35 U.S.C. ' 103 for the modification proposed by the Examiner.
We generally agree with this assertion by appellant, even in view of the
examiner=s amplified reasoning of combinability of pages 5 and 6 of the Answer.
Appellant argues in the Brief that the Valu Guide transition cap assembly shows only a
single boss around a single opening, concluding that this is insufficient evidence to
establish obviousness as to the claimed four openings that have a symmetrical nature,
whereas the reference has an asymmetrical nature. The examiner reasons Awhile the
transition cap assembly shows only a single boss, it does show a boss around it=s
circular openings that may be interpreted as teaching the placement of a boss around
all openings of a clamp.@ The examiner continues by citing older case law, Athat the
mere duplication of parts is obvious, unless a new visual effect results.@
We do not agree with this amplified reasoning by the examiner. To the extent
that both primary or Rosen-type references (Herzog=s element 36 and Valu Guide=s rod
cross block in Bulletin Number 153) each do not show any bosses protruding from the
four holes of Herzog=s element 36 or the four holes of the Valu Guide rod cross block in
Bulletin Number 153, the most that we can conclude is that the ordinary designer would
have chosen to modify only one opening in each of these references in view of the
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