Appeal No. 2005-0254 Page 4
Application No. 10/197,012
In the rejection under 35 U.S.C. § 103 before us in this appeal (answer, pp. 3-4),
the examiner (1) set forth the pertinent teachings of Murison; (2) ascertained that
"Murison discloses the claimed invention except for having an additional tubular core
member 54 on the cylindrical member 56; and (3) concluded that:
It would have been obvious to one having ordinary skill in the art at the time the
invention was made to make the tubular core member 54 integral with the
cylindrical member 56, thus resulting in an "integral, one-piece spool'', to simplify
the spool and have fewer parts, since it has been held that forming in one piece
an article which has formerly been formed in two pieces and put together
involves only routine skill in the art. Howard v. Detroit Stove Works,
150 U.S. 164 (1893).
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 structure would have been obvious at the time the
invention was made to a person of ordinary skill in the art. No such per se rule exists.3
3 In Howard the Supreme Court stated (150 U.S. at 169-70) that
the Monumental grate, which was in public use five years before application was
made for the patent under consideration, contains all of the elements of the
Beckwith grate, except that, being adapted for burning coal, it is cast in two
pieces, while the Beckwith grate is cast in one piece. This does not involve
patentable invention.
. . . As to the third patent, it is void because the claims in it were clearly
anticipated, and because it involves no invention to cast in one piece an article
which has formerly been cast in two pieces, and put together.
In Howard, prior art other than the Monumental grate taught casting the grate in one
piece; thus, providing evidence as to why it would have been obvious at the time
(continued...)
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