Appeal No. 2005-2543
Application 08/637,894
characterized as “bulbous;” and there is no evidence in either the disclosure of Scarella or in the
FIGs. thereof, that any or all of the ribs 7 form an air-tight seal. Indeed, as appellant points out
(brief, e.g., pages 6-7; reply brief, pages 1-3), while ribs 7 are disclosed “for anchoring” and
form a part of the outer part of cone 6, there is no disclosure that any or all of the ribs 7 per se
form an air-tight seal when “cone 6 inflates slightly, and its outer part adheres against the inside
of the trap, it takes on its shape and creates a seal” (Scarella, page 5, l. 19, to page 6, l. 4). We
do not arrive at a different result by considering cylindrical portion 8 of cone 6, and indeed, the
examiner does not explain how cylindrical portion 8 changes the relationship of ribs 7 to the
limitations of the appealed claims.
Thus, we find as a matter of fact that Scarella FIG. 1 and the disclosure with respect
thereto in the reference does not describe each and every limitation of appealed claims 1, 2, 6
and 9, arranged as required by the claims in a manner sufficient to have placed a person of
ordinary skill in the art in possession of the claimed drain plunger within the meaning of §
102(b), and therefore, we reverse this ground of rejection. See generally, In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); Diversitech Corp. v. Century Steps,
Inc., 850 F.2d 675, 677-78, 7 USPQ 1315, 1317 (Fed. Cir. 1988); Lindemann
Maschinenfabrik GMBH v. American Hoist and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481,
485 (Fed. Cir. 1984).
In the ground of rejection of appealed claim 1 as obvious over the combined teachings of
Scarella and Locke,6 the examiner relies on Locke “which discloses an analogous plunger which
includes continuous seals 12,” holding that it would have been obvious “to associate continuity
with the Scarella rings seals [sic] in order to facilitate drain engagement” (supplemental answer,
pages 6-7). In response to appellant’s arguments in the brief (see pages 11-12), the examiner
5 See, e.g., The American Heritage Dictionary, Second College Edition 215 (1982); Webster’s II
New Riverside University Dictionary 207 (1988).
6 In the ground of rejection based on Scarella and Tash (see above note 3), the examiner relied
on Tash solely for the disclosure of “an analogous plunger which further is plastic (col. 2 ln. 64
and col. 3 lns. 1-2)” to hold that it would have been obvious to “associate plastic with the
Scarella plunger” (supplemental answer, pages 5-6). None of the appealed claims have a
“plastic” limitation and, on this basis, we find it unnecessary to discuss Tash with respect to this
ground of rejection.
- 4 -
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007