Appeal No. 2005-0841
Application No. 08/230,083
original patent application claim 8 in the following aspect: "[a]
second clip connection comprising a second springy tongue integral
with the surrounding wall."
Since claim 14 is broader than original patent application
claim 833 in one non-germane aspect, and also narrower than
original patent application claim 8 in one aspect, the broadening,
non-germane aspect of claim 14 must be balanced against the
narrowing aspect of claim 14. The narrowing aspect is germane to
the prior art rejection in the sense that it overcomes the prior
art applied in the prior art rejection.34, 35 Viewed from this
perspective, claim 14 is at least narrower in all aspects germane
to the prior art rejection (see footnotes 29 and 35), thus falling
into Clement principle (3)(b) and avoiding the recapture rule.
33 Original patent application claim 8 depended from original patent
application claim 7 which depended from original patent application claim 1.
34 In the prior art rejection of original patent application claims 1,
3-5 and 7-11, the examiner combined either U.S. Patent No. 3,405,968 to Feles et
al. (Feles) or U.S. Patent No. 4,781,106 to Frien with U.S. Patent No. 4,691,623
to Mizusawa. The examiner ascertained that Feles and Frien do not disclose the
resilient clip connection. Mizusawa shows a ventilator device having a single
elastic pawl. The examiner then concluded that it would have been obvious to one
having ordinary skill in the art at the time the invention was made to provide
either Feles and Frien with an elastic pawl as suggested and taught by Mizusawa.
Thus, the applied prior art does not teach or suggest both a first clip
connection comprising a first springy tongue spaced from the wall and a second
clip connection comprising a second springy tongue integral with the surrounding
wall.
35 There is very little specific authority or guidance given by the
Federal Circuit as to how one ascertains whether or not an aspect is or is not
germane to the prior art rejection. Since there is no prior art rejection of
claim 14 and the applied prior art does not teach or suggest both a first clip
connection comprising a first springy tongue spaced from the wall and a second
clip connection comprising a second springy tongue integral with the surrounding
wall (see footnote 34), it is appropriate, in our view, to conclude that the
narrowing aspect overcomes the prior art applied and is therefore germane to the
prior art rejection.
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