Appeal 2006-1521
Application 09/815,877
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 314 (Fed.
Cir. 1983) (Stating anticipation of product claims cannot be predicated on
mere conjecture respecting characteristics of products that might result from
practicing the process of the reference).
We reverse the § 102(b) rejection of claims 34-35 and 54 over
Dickerhoff.
35 U.S.C. § 103(a) REJECTION OVER BERKE IN VIEW OF
DICKERHOFF
Claims 35 and 56 are rejected as being obvious over Berke in view of
Dickerhoff. The Examiner in her rejection states that Berke teaches “all of
the limitations of the claims except a plug removably received in at least one
port of the two ports” (Answer 3). The Examiner indicates that Dickerhoff
discloses using a “snap” which is “understood by the Examiner to be a plug”
(Answer 3). Based on Dickerhoff’s disclosure, the Examiner reasons that
“[t]he snap is a means to allow reclosing of the port after the permanent seal
has been broken” such that it would have been obvious to use Dickerhoff’s
snap as a “means of reclosing the port of Berke [ ] once the permanent seal
has been broken” (Answer 3).
Appellants argue that there is no motivation to combine “Berke with
Dickerhoff” (Br. 7). Appellants base their lack of motivation argument on
Berke’s disclosure to use semi-rigid collars as the inlet ports, whereas
Dickerhoff appears to use flexible tubes as the inlet ports (Br. 7). Appellants
contend that one of ordinary skill in the art would not combine Dickerhoff’s
flexible tube closure mechanisms (i.e., “snaps”) with Berke’s semi-rigid
collar (Br. 7). As further evidence of no motivation to combine, Appellants
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007