Appeal No. 2005-0254 Page 5
Application No. 10/197,012
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
Howard or any other case as a basis for rejecting claims that differ from the prior art by
reciting a one-piece 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 Murison's tubular core member 54 and ribbon spool 224 as a one-piece structure.
In this case, we agree with the appellant that the examiner has failed to establish
a prima facie case of obviousness for the claims under appeal with respect to the one-
piece printer ribbon spool limitation as recited in claim 1.5 In that regard, it is our
determination that there is no evidence before us in the rejection under appeal that the
one-piece printer ribbon spool limitation as recited in claim 1 would have been obvious
3(...continued)
Beckwith's invention was made to a person of ordinary skill in the art to have cast the
Monumental grate as one piece.
4 Murison's ribbon spool 22 includes the cylindrical member 56 on which the
tubular core member 54 is mounted.
5 The one-piece printer ribbon spool limitation as recited in claim 1 requires, inter
alia, that the one-piece printer ribbon spool comprises an elongate cylindrical ribbon
support shaft of substantially uniform diameter, having directly wound thereon a length
of a printing ribbon.
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