Appeal No. 2006-2063
Application No. 10/126,019
weight” (final rejection, page 3). In addition, the examiner
urges that
To not include a light-curable adhesive is an
obvious matter of choice in not using a
specific type of adhesive and is an obvious
matter of choice in a non-critical step, the
criticality not being established in the
disclosure as originally filed. As to claims
2 and 3, all or [sic, of] the actual claimed
structure and components being shown, the
stated properties are inherent and/or are
given no weight because some component or
limitation that is responsible for the
claimed property has not be claimed.
Like appellants (brief, pages 6-11 and reply brief), we find
that the examiner has failed to appreciate the actual differences
between Randklev and the claimed subject matter, failed to accord
those differences proper patentable weight, and failed to
establish a prima facie case of obviousness. The recitation in
appellants’ claim 1 of an orthodontic bracket carrying a first
part of an at least two-part adhesive, in the context of the
present application, is a functional and structural limitation
that may not be dismissed as being “merely terminology and/or
intended use,” as has been urged by the examiner. Nor, in our
opinion, does the examiner have any basis to conclude that to not
use a light-curable adhesive in Randklev is an obvious matter of
choice. Randklev expressly desires use of a light-curable
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