Appeal No. 2004-0526
Application No. 09/981,975
to advance any factual basis to support his conclusion to the
effect that it would have been obvious to one of ordinary skill in
the art to modify the tools of Dossier or Colvin such that the
connection surfaces comprise concave and convex surfaces defining
arcs having the same radius, as now claimed. Rather, the
examiner’s stated position appears to be based on impermissible
hindsight gleaned from appellants’ own disclosure. This of course
is improper. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992).
Concerning the examiner’s argument on page 2 of the final
rejection that the claimed subject matter would have been obvious
because there is no clear indication from the original
specification that the claimed “ranges” are critical, we note that
criticality is not a requirement of patentability. See W. L. Gore
& Assocs. v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
For the reasons stated above, we cannot support the examiner’s
rationale for rejecting the appealed claims. Accordingly, we shall
not sustain the examiner’s rejection of claims 1-4 and 7-9 under 35
U.S.C. § 103(a).
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007