Appeal No. 2006-1149
Application No. 10/296,406
from fully engaging adapter 1 [answer, page 5].
We agree with the examiner that a close inspection of Fig. 1 does reveal that the
internal width of the lower portion of adapter 1 is shown as being slightly smaller than the
width of the lateral protrusion. However, as appellant has correctly noted, the Court of
Appeals for the Federal Circuit has determined that patent drawings do not define the precise
proportions of the elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue. Hockerson-Halberstadt, Inc. v. Avia Group
Intern., 222 F.3d 951, 956 (Fed. Cir. 2000), citing In re Wright, 569 F.2d 1124, 1127, 193
USPQ 332, 335 (CCPA 1977) (“Absent any written description in the specification of
quantitative values, arguments based on measurement of a drawing are of little value”). We
note that the instant specification is completely silent regarding the precise proportions of the
elements shown in the drawings.
Accordingly, the examiner’s rejection of claim 20 under 35 U.S.C. §112, first
paragraph and the corresponding objections to the drawings under 35 C.F.R. §1.83(a) are
without merit.
We now consider the examiner’s rejection based on 35 U.S.C. § 103. In rejecting
claims under 35 U.S.C. § 103, it is incumbent upon the examiner to establish a factual basis
to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
Any inquiry into obviousness must ascertain “the scope and content of the prior art,”
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