Appeal No. 2005-2098
Application No. 09/810,641
Concerning the rejection of claims 1 through 5, 7 and 8 under 35 U.S.C. § 103(a), we
direct attention to the final rejection (pages 2-3) and answer for a full understanding of
the examiner’s position. Beginning with a consideration of independent claim 1, after a
review of the applied patents to Jöst and Marton, we agree with appellant that the
examiner has not made out a prima facie case of obviousness and has improperly
based at least part of his suggested modifications of the prior art on hindsight gleaned
from first having read appellant’s own specification and claims. In particular, while we
would support the examiner’s conclusion that the collective teachings of Jöst and
Marton would have made it obvious to one of ordinary skill
in the art at the time of appellant’s invention to provide the perforations (8) of Jöst in a
distribution and size so as to insure that at least two perforations are in register with
each exhaust port (7) of the support member (5/6) so as to thereby insure unhindered
suction of abrasive dust away from the grinding surface, we find no basis whatsoever
for the examiner's attempt
to then eliminate all of the perforations in the grinding disc (1) of Jöst except those that
would provide an annular zone of perforations, and thus an abrasive disc, like that
specifically defined in appellant’s claim 1.
The examiner’s contention that the pattern of distribution of perforations across the
disc in Jöst, particularly those located outside the exhaust ports of the sander, is not
critical or otherwise important to the invention therein is belied by the disclosure of that
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