Appeal 2006-2612
Application 10/225,316
Examiner, the Examiner finds that representative claim 1 reads on the
subject matter described by Landi and that Landi describes that the product
structure is useful as a shock isolator.
Appellant maintains that Landi does not disclose a structure with
sidewall base ends positioned relative to a central axis, as called for in
representative claim 1. In this regard, Appellant urges that the central axis
the Examiner refers to at page 8 of the Answer in explaining how Landi
meets the claimed subject matter does not correspond to Appellant’s central
axis (33, Fig.’s 1 and 2), as referred to at page 6, lines 4 and 5 of Appellant’s
Specification. However, such an argument is unpersuasive of any reversible
error in the Examiner’s anticipation rejection because representative claim 1
does not limit the claimed sidewall axis to an orientation as disclosed in
Appellant’s Specification. Rather, representative claim 1 merely notes that
the sidewalls have a central axis without specifying a particular plane
carrying the axis or another geometric reference so as to limit the claimed
subject matter to the disclosed axis as depicted in several of Appellant’s
drawing figures.
Nor does Appellant limit the relative disposition of the sidewall axis
by specifying a particular functionality in representative claim 1 that would
require a particular orientation of the claimed structure. Thus, Appellant’s
contention concerning the shear or tension mode operation discussed in
Appellant’s Specification is unavailing as a patentable distinction over
Landi. When the claim does not recite allegedly distinguishable features,
Appellant cannot rely on them to establish patentability. See In re Self,
671 F.2d 1344, 1350-1351, 213 USPQ 1, 7 (CCPA 1982).
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