Appeal No. 2004-1159
Application 10/108,315
routinely experimented to determine optimum dimensions of the
paper towel roll and holder of Monahan for some particular use.
Since we have determined that the teachings and suggestions
that would have been fairly derived from Monahan would not have
made the subject matter as a whole of claim 21 on appeal obvious
to one of ordinary skill in the art at the time of appellant’s
invention, we must refuse to sustain the examiner’s rejection of
that claim under 35 U.S.C. § 103(a).
To summarize, we have refused to sustain the examiner’s
rejection of claim 11 under 35 U.S.C. § 102(b) based on Monahan
and the rejection of claims 12, 13 and 21 under 35 U.S.C.
§ 103(a) based on Monahan. However, we have sustained the
examiner’s rejection of claim 11 under 35 U.S.C. § 102(b) based
on French. Thus, the examiner’s decision is affirmed-in-part.
In addition to the foregoing, we REMAND this application to
the examiner under 37 CFR § 41.50(a) for 1) a more complete
search of the prior art and 2) consideration of a rejection of
claim 21 under 35 U.S.C. § 103(a) based on U.S. Patent No.
9
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