Appeal No. 2005-1379
Application 09/734,601
Midgley 3,594,923 Jul. 27, 1971
Gaines 85,299 Dec, 29, 1868
(Patent Specification, United Kingdom)
Hun 1 498 951 Jan. 25, 1978
(Patent Specification, United Kingdom)
The examiner has rejected appealed claims 5 through 7 under 35 U.S.C. § 103(a) as being
unpatentable over Midgley in view of Gaines (final action mailed November 27, 2002
(hereinafter final action), pages 2-3), and claim 8 under 35 U.S.C. § 103(a) as being unpatentable
over Midgley in view of Gaines, and further in view of Hun (final action, page 3).1
Appellant states that appealed claims 5 and 6 are separately argued and merely describes
the limitations of appealed claims 7 and 8 (brief, page 5). The examiner finds that appellant has
not presented separate argument with respect to claims 7 and 8 (answer, pages 2-3). Thus, we
decide this appeal based on appealed claims 5, 6 and 8 as representative of the grounds of
rejection and appellant’s grouping of claims. 37 CFR § 1.192(c)(7) (2003); see also 37 CFR
§ 41.37(c)(1)(vii) (September 2004).
We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellant, we
refer to the answer and to the brief for a complete exposition thereof.
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner that, prima facie, the claimed
two part teaching puzzle apparatus encompassed by appealed claims 5 and 6 would have been
obvious over the combined teachings of Midgley and Gaines to one of ordinary skill in this art at
the time the claimed invention was made. Accordingly, we again evaluate all of the evidence of
obviousness and nonobviousness based on the record as a whole, giving due consideration to the
weight of appellant’s arguments in the brief. See generally, In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788 (Fed. Cir. 1984).
1 We consider the supplemental answer mailed August 24, 2004. The examiner states in the
answer that the grounds of rejection are set forth in the final action (page 3).
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