Appeal No. 2004-0713 Page 6
Application No. 09/900,256
of Sonoda's pinion gear, torsion bar and valve sleeve, instead of separate parts fixed
together, in order to simplify the assembly process. In support of this conclusion of
obviousness the examiner cited to In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA
1965) and In re Lockart, 190 F.2d 208, 90 USPQ 214 (CCPA 1951).
The examiner has incorrectly drawn from the above-noted case law, which
turned on specific facts, a general obviousness rule: namely, that forming several
pieces integrally as a one-piece, monolithic structure is not considered to be patentable
subject matter. No such per se rule exists. 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 Larson, Lockart or any other case as a basis
for rejecting claims that differ from the prior art by reciting a one-piece, monolithic
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 Sonoda's separate
torsion bar as a one-piece, monolithic structure with Sonoda's one-piece, monolithic
component having the pinion gear and the valve sleeve.
In this case, we agree with the appellants that the examiner has failed to
establish a prima facie case of obviousness for the claims under appeal with respect to
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