Appeal 2006-2022
Application 10/092,320
the orifice plate” (Br. 11). Citing In re Ratti, 270 F.2d 801, 812, 123 USPQ
349, 352 (CCPA 1959), Appellants contend that Yamamoto’s vibration-
proof device would require significant modification and redesign that
directly contrasts with the mandates of § 103(a) (Br. 11).
Appellants further point out that Yamamoto shapes his diaphragm 34
to complement the curves of the orifice member (11) to preclude the
generation of abnormal sound accompanied by sliding displacement of the
diaphragm (Br. 11). Based on these arguments, Appellants conclude that
spacing of the periphery of the diaphragm away from the orifice members is
in direct contrast to the teachings of Yamamoto and would destroy the
fundamental intent, purpose, function, and principle of operation of
Yamamoto’s device (Br. 11).
The Examiner responds to Appellants’ hindsight argument by citing
In re McLaughlin, 443 F.2d 1392, 1396, 170 USPQ 209, 212 (CCPA 1971)
(Answer 3-4). The Examiner contends that he used only “knowledge which
was within the level of ordinary skill at the time the claimed invention was
made” and not “knowledge gleaned . . . from the . . . [Appellants’]
disclosure” (Answer 3).
Regarding Appellants’ arguments directed to lack of motivation to
combine Yamamoto and Hein, the Examiner responds that it is well “known
in the art to provide for damping of different frequency ranges by allowing
flow around a decoupler or diaphragm as is taught by Hein . . .” (Answer 4).
The Examiner also notes that the periphery is spaced apart in Yamamoto as
broadly claimed (Answer 4). The Examiner explains that Appellants claim a
“periphery” not a “peripheral edge” (Answer 3). The Examiner defines
periphery as “a portion near the edge” (Answer 3).
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