Appeal No. 2004-0430 Page 5
Application No. 09/174,868
invention was made to a person of ordinary skill in the art. No such per se rule exists.1
See In re Hubbell, 164 F.2d 700, 702-04 76 USPQ 105, 107-09 (CCPA 1947); In re
Otto, 121 F.2d 553, 555, 50 USPQ 149, 150 (CCPA 1941). The examiner's citation of
Howard or any other case as a basis for rejecting claims that differ from the prior art by
reciting a one-piece structure is improper, if it sidesteps the fact-intensive inquiry
mandated by 35 U.S.C. § 103. Thus, in this case, one must determine if it would have
been obvious to one of ordinary skill in the art at the time the invention was made to
make Musacchia's separate call and platform as a one-piece structure.
In this case, we agree with the appellant that the examiner has failed to establish
a prima facie case of obviousness for the claims under appeal with respect to the one-
piece limitation as recited in claims 1, 10, 14 and 17. In that regard, it is our
determination that there is no evidence before us in this appeal that the one-piece
1 In Howard the Supreme Court stated (150 U.S. at 169-70) that
the Monumental grate, which was in public use five years before application was made for the
patent under consideration, contains all of the elements of the Beckwith grate, except that, being
adapted for burning coal, it is cast in two pieces, while the Beckwith grate is cast in one piece.
This does not involve patentable invention.
. . . As to the third patent, it is void because the claims in it were clearly anticipated, and
because it involves no invention to cast in one piece an article which has formerly been cast in two
pieces, and put together.
In Howard, prior art other the Monumental grate taught casting the grate in one piece. Thus, providing
evidence as to why it would have been obvious at the time Beckwith's invention was made to a person of
ordinary skill in the art to have cast the Monumental grate as one piece.
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