Appeal No. 2006-0465
Application 10/445,707
1318 (Fed. Cir. 1996).” In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed.
Cir. 2000).
We further find that one of ordinary skill in the art would not have been led to the
claimed arrangement by the combined teachings of Duga and Dorman. Indeed, as appellants
point out, Dorman has actuators on different sides of the forehearth. Thus, we determine that
one of ordinary skill in this art reasonably following the combined teachings of these references
would have placed Duga’s mechanisms 10 on opposite sides of the forehearth, and thus, would
not have arrived at the claimed invention encompassed by the appealed claims. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed. Cir. 1988).
Accordingly, in the absence of a prima facie case of obviousness established over Duga
alone or combined with Dorman, we reverse the grounds of rejection of claims 1 through 5 and
9 through 16 under 35 U.S.C. § 103(a).
The examiner’s decision is reversed.
Other Issues
The examiner has withdrawn the grounds of rejection of appealed claims 1 through 5 and
9 through 16 under the judicially created doctrine of obviousness-type double patenting over
certain claims of United States Patent 6,622,526 (final action mailed August 13, 2004, pages
8-11), because the same were not advanced in the answer apparently on the basis of the terminal
disclaimer filed by appellants that was accepted by the USPTO (brief, page 6).
We find no evidence in the official electronic files of the USPTO that the examiner
considered whether the appealed claims constitute obviousness-type double patenting under the
judicially created doctrine over the claims of United States Patent 5,885,317, and suggest that the
examiner address this matter upon further consideration of the claims subsequent to the
disposition of this appeal.
Reversed
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