Appeal No. 2005-2543
Application 08/637,894
for essentially the reasons we discussed above for holding that cone 6 of Scarella did not satisfy
the requirements of the seal rings specified in appealed claim 1. The fact that one of ordinary
skill in this art can so modify the plunger of Scarella does not alone provide the motivation to do
so. See In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992); In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Accordingly, in the absence of a prima facie case of obviousness, we reverse the ground
of rejection of appealed claims 1, 2, 6 and 9 under 35 U.S.C. § 103(a) over Scarella, Tash and
Locke.
The examiner’s decision is reversed.
Remand
We remand the application to the examiner for consideration of issues raised by the
record. 37 CFR §1.41.50(a)(1) (September 2004); Manual of Patent Examining Procedure
(MPEP) § 1211 (8th ed., Rev. 2, May 2004; 1200-29 – 1200-30).
We find that Tash discloses a drain plunger in, among others, Fig. 1, showing sealing
ring or rim 38 attached to bellows 14 and ring 42 depending from sealing ring or rim 38, wherein
ring 42 can have skirt 52 depending therefrom which acts as a seal as shown in Fig. 4, sealing
the plunger in a drain (e.g., col. 3, ll. 1-39, col. 3, l. 57, to col. 4, l. 9). We further find that the
drain plungers disclosed by Tash differ from the plungers encompassed by appealed claim 1 in
the absence of “the bulbous curved second seal” as pointed out by appellant in the brief (page
10).
We found above that the side wall 11 of cup 3 with the series of annular, corrugations 12,
which are smaller in diameter in the lower edge than in the upper portion and the second of the
series can be characterized as having a bulb-like rounded projection, as disclosed by Locke
satisfies the requirements for the sealing rings in appealed claim 1.
Thus, the examiner should consider whether one of ordinary skill in this art would have
found in the combination of Tash and Locke, as well as in any other reference developed by the
examiner, the motivation to modify the drain plunger of Tash by replacing the part thereof
containing sealing ring or rim 38 and ring 42 with corrugated side wall 11 of cup 3 of Locke in
view of the structural relationship between the sealing rings of Tash and of the annular,
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