Appeal No. 2006-1853 Page 16
Application No. 10/051,573
Figure 1 of Whiten clearly shows a space between adjacent tracks (58) such that
there is no teaching of two devices secured directly to one another.
III. Rejection under 35 U.S.C. § 103(a)
The examiner rejected claims 5, 6, 10, and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Whiten, as applied to claims 1-4, 7-9, 11-19, and 21, in
view of Robertson. In response to this rejection, the appellants argue that because
the devices in Whiten and Robertson are presumably effective and functional for
their intended purposes, there is no need, and thus no suggestion or incentive, to
combine them. (Appellants’ Brief, p. 18).
With regard to claim 5, which depends from claim 1, the examiner stated
that aluminum is a well-known and commercially available material known for its
lightweight properties. (Examiner’s Answer, p. 8). We sustain the examiner’s
rejection of claim 5. Whiten discloses, “the front and rear cross members 54 and
56 are of a rectangular tube structure formed of metal or plastic . . ..” (Whiten,
column 5, lines 13-14). We find that Whiten teaches a support spar made out of
metal and having a rectangular cross section. The appellants do not provide any
reason why the selection of aluminum is a patentable feature of the claim. The
selection of aluminum, a known material with known properties, based on
suitability for its intended use would have been obvious to one skilled in the art at
the time of the invention.7 See Sinclair & Carroll Co. v. Interchemical Corp., 325
7 We note that the examiner does not appear to have relied on any teaching from Robertson in his
rejection of claim 5. As such, we affirm the rejection of claim 5 based on the teachings of Whiten alone.
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007