Appeal No. 2005-2529
Application No. 10/154,140
claims separately rejected by the examiner under §§ 112 and 103
stand or fall together.
We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we find
that the examiner's § 112 rejection is not well founded.
However, we are in complete agreement with the examiner that the
claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the
applied prior art. Accordingly, while we reverse the examiner's
§ 112 rejection, we will sustain the examiner's § 103 rejection
for essentially those reasons expressed in the Answer.
We consider first the examiner's rejection under § 112,
second paragraph. According to the examiner:
A force minimally sufficient to cause a TAWH is
indefinite because the specification does not provide
meaningful description of such a force, one of ordinary
skill in the art of handlebars is not apprised of the
scope of such a force, and the scope of such a force
cannot be ascertained by the claims.
(Page 3 of Answer, second paragraph). The examiner explains that
"[a] value minimally sufficient to cause a TAWH in a small child
is different from that value minimally sufficient to cause a TAWH
in a professional athlete" (id.). However, as pointed out by
appellants, current patent jurisprudence allows such a limitation
to be defined functionally rather than by absolute values, and we
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