Appeal No. 2004-1057
Application No. 09/844,385
The Examiner states that some ballpoint pens have actuators
that rotate incrementally in a single direction each time the
pusher is pushed and others have an actuator that does not rotate
at all. Therefore, if we agree with the Examiner's statement,
the actuator 46 disclosed by Gorgi could function in either of
the two manners suggested. Thus, there is a probability or
possibility that Gorgi's actuator may or may not rotate.
Accordingly, the Examiner has failed to establish the inherency
as required by our reviewing court because the limitation "no net
rotation of said actuator" is not necessarily present from the
given set of circumstances. Therefore, we will not sustain the
Examiner's rejection of independent claim 9 and its dependent
claims 10-13 based on inherency.
Furthermore, actuators of traditional ballpoint pens do
rotate in order to advance or retract the ink reservoir or
cartridge. See, e.g., the rotary cam 9 in U.S. Patent No.
6,698,960 B2 issued to Noguchi; the casing 7 in U.S. Patent No.
4,172,674 issued to Paroty; the cam 4 in U.S. Patent No.
5,713,680 issued to Yoshino et al.; and the cap 28 in U.S. Patent
No. 2,78,337 issued to Lovejoy. However, if the Examiner finds a
reference that teaches an actuator which does not rotate in order
7
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007