Appeal No. 2005-1126
Application No. 09/846,141
The examiner concedes (see page 4 in the answer) that
Francois does not meet the limitation in independent claim 2, and
the corresponding limitation in claim 8 (which depends from
independent claim 5), requiring the composite rod to comprise
fibers oriented at 0°±15° with respect to the longitudinal axis
of the rod. The examiner submits, however, that “[t]he
particular orientation . . . of the fibers would have been
obvious to one of ordinary skill in the art as a mere matter of
choice dependent on the desired spring rate” (answer, page 3).
Presumably, this conclusion of obviousness encompasses the
addition to the Francois torsion rod/tube 10 of fibers oriented
at 0°±15° with respect to the longitudinal axis of the rod. The
examiner further explains that “anyone of even rudimentary
knowledge of forming fiberglass understands that plies are laid
successively at different angles so as to increase the strength
-- note the suggestion in column 2, lines 15-20 of Francois”
(answer, page 4).
Rejections based on 35 U.S.C. § 103(a) must rest on a
factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
177-78 (CCPA 1967). In making such a rejection, the examiner has
the initial duty of supplying the requisite factual basis and may
not, because of doubts that the invention is patentable, resort
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