Appeal No. 2005-0934 Page 8
Application No. 10/414,060
The appellant argues that Takamiya does not teach attaching a bottom end of a
handle of an open umbrella to a top edge of an open door bounding a window of the
door to provide an operative attached position of the umbrella to the top edge bounding
the door window. We agree. Instead, Takamiya teaches attaching a bottom end of a
handle of an open umbrella to a top edge of a window of the door to provide an
operative attached position of the umbrella to the top edge of the door window. As
such, the umbrella in Takamiya is not attached to a top edge of a car door which
bounds (i.e., determines the limits of) the door window.
The examiner asserts (answer, p. 6) that "[t]he appellant is not claiming the
vehicle itself. Thus what kind of door the umbrella is attached to is not accorded
patentable weight in such method claim." All words in a claim must be considered in
judging the patentability of that claim against the prior art. In re Wilson, 424 F.2d 1382,
1385, 165 USPQ 494, 496 (CCPA 1970). Furthermore, it is well established that the
materials or apparatus on which a process is carried out must be accorded weight in
determining the obviousness of that process. See In re Pleuddemann, 910 F.2d 823,
825-28, 15 USPQ2d 1738, 1740-42 (Fed. Cir. 1990); In re Kuehl, 475 F.2d 658, 664-65,
177 USPQ 250, 255 (CCPA 1973); Ex parte Leonard, 187 USPQ 122, 124 (Bd. App.
1974). In our view, the case law clearly establishes that the position of the examiner in
this case is in error.
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