Appeal No. 2004-0504
Application No. 09/455,735
prior art, absent some teaching or suggestion in the prior art to
combine these elements. See Arkie Lures, Inc. v. Gene Larew
Tackle, Inc., 119 F.3d 953, 957, 43 USPQ2d 1294, 1297 (Fed. Cir.
1997). “[T]here must be some logical reason apparent from
positive, concrete evidence of record which justifies a
combination of primary and secondary references.” In re Regel,
526 F.2d 1399, 1403 n.6, 188 USPQ 136, 139 n.5 (CCPA 1975).
The only reason stated by the examiner for combining Raabe
and Hogendijk is that substituting the Hogendijk notches and
teeth connection for Raabe’s clamp connection “would merely
constitute substitution of functionally equivalent connection
methods.” Answer, page 4. “Expedients which are functionally
equivalent to each other are not necessarily obvious in view of
one another.” In re Scott, 323 F.2d 1016, 1019-20, 139 USPQ 297,
299-300 (CCPA 1963). On this record, the examiner has not
established by positive, concrete evidence that the “connection
methods” of Raabe and Hogendijk would have been considered
“functionally equivalent,” much less established the obviousness
of substituting one connection method for another. As found by
the examiner (Answer, page 3), Raabe discloses a set screw s21
that provides for adjustment by means of sliding connection s20
(see Figure 7 and page 2, right col., ll. 14-17). Similarly,
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007