Appeal 2006-1312
Application 09/955,604
whole, giving due consideration to the weight of Appellants’ arguments in
the Brief and Reply Brief. See generally, In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We agree with the Examiner’s findings of fact from the references and
conclusions of law based on this substantial evidence as set forth in the
Answer, to which we add the following for emphasis.
Appellants submit with respect to claims 30 and 138, that there is no
motivation for one of ordinary skill in this art to combine Pieper and Rochlis
and modify the production tools of Pieper by using different shaped cavities
as suggested for production tools by Rochlis because the teachings of Pieper
are limited to production tools having consistent or uniform cavities
throughout, citing, inter alia, Pieper at col. 1, ll. 57-61, col. 7, ll. 4-15
and 63-68, col. 7, l. 55, to col. 8, l. 15, col. 8, ll. 15-25, and the Pieper
figures (Br. 9-10; Reply Br 1-4). Appellants maintain this position even in
view of the Examiner’s contention that Pieper would have taught “that the
surface can have varied shapes” at col. 7, ll. 4-15, and col. 8, ll. 15-25
(Answer 9; Reply Br. 2-4). Appellants argue that there is no basis for the
proposed modification of Pieper’s production tool by using cavities of
different dimensions as taught by Rochlis because the motivating advantages
that the Examiner finds in this relationship, citing Answer at 7, are “already
attributed to the uniformity and consistency found in the abrasive articles”
prepared with Pieper’s production tools (Reply Br. 5).
Appellants point out, with respect to claim 138, that the claimed
“geometric shape of the cavities of the first, second, and third rows are
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