Appeal No. 2004-1798
Application 08/883,387
With particular regard to method claim 157, this claim
essentially sets forth method steps necessary to arrive at a
multi-story building of the type generally set forth in
appellants’ claim 27. The examiner’s treatment of this claim
(answer, page 6) reads as follows:
In regard to claim 157, the operational expedients
of the secondary references may obviously to [sic]
selectively use or substitute in the method of
Livingston modified by Yarnick and Hughes before him
particularly at the time of the reduction to practice
of the subject matter of these claims
Like appellants (brief, page 8), we are at somewhat of a
loss to understand exactly what the examiner intended by the
above-quoted cryptic statement purportedly addressing method
claim 157 on appeal. Suffice to say that the examiner has made
no effort to follow the guidance provided by the Supreme Court in
Graham v. John Deere, 383 U.S. 1, 148 USPQ 459 (1966), or Office
policy as enunciated in MPEP § 2141, for making an obviousness
rejection. As a result, the examiner has failed to establish a
prima facie case of obviousness with respect to appellants’ three
page long method claim 157. For that reason, the examiner’s
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