Appeal No. 2005-2180 Page 2
Application No. 10/051,417
Claims 1-3, 11, 18-21, 26-32 stand rejected under 35 U.S.C. '103(a), as
obvious over Mochizuki . Claims 4-5, 7, 12-14 and 22-23 are rejected under 35 U.S.C.
'103(a) as obvious over the combined teachings of Mochizuki and Santella. Claim 6
is rejected under 35 U.S.C. '103(a) as obvious over the combined teachings of
Mochizuki and Santella, and further in view of design choice. (Answer, pp. 3-5). We
affirm the rejections.
Rather than reiterate the conflicting viewpoints advanced by the Examiner and
the Appellants regarding the above-noted rejections, we make reference to the
Answer (mailed March 05, 2004) for the Examiner's reasoning in support of the
rejection, and to the Brief (filed February 02, 2004) and the Reply Brief (filed May 05,
2004) for the Appellants= arguments there against.
We initially note that Appellants assert that for purposes of appeal the claims
are grouped into the following groups; Group I, claims 1, 11 and 18; Group II, claims 2
and 32; Group III, claims 26, 28 and 30 and Group IV, claims 22 and 23. (Brief, p. 5).
We will consider the groups of claims separately to the extent that these groups of
claims have been argued separately in the brief.
OPINION
We look to the specification for a discussion of the claim requirement "wherein
the adhesive has sufficient cohesive strength to hold the valve cover in place during
normal operating conditions.@ During patent prosecution, claims are given their
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