Appeal 2006-3309
Application 10/311,263
by claim 11 on appeal only from the relative sizes of the annular rings of
adhesives in Figure 12 of Kotoyori (see the Answer and Final Rejection).
Although the Examiner does not state any basis for the finding that the
relative amounts of adhesive in Figure 12 of Kotoyori meet the claim 11
limitation, we presume the Examiner has again relied on the relative
amounts as shown in Figure 12 (id.). However, it is well established that
patent drawings do not define the precise proportions of the elements and
may not be relied on to show particular sizes if the specification is
completely silent on the issue. See Nystrom v. Trex Co., 374 F.3d 1105,
1116-17, 71 USPQ2d 1241, 1250 (Fed. Cir. 2004). See also 37 C.F.R. §§
1.81(1988) and 1.84(k)(2004). The Examiner has not pointed to any text in
Kotoyori stating that the drawings are to scale. Therefore we cannot sustain
the Examiner’s rejection.
Upon the return of this application to the jurisdiction of the Examiner,
the Examiner should review the cited prior art and any other relevant prior
art in the consideration of the obviousness of the claimed method under §
103(a). Of course, any consideration of § 103(a) would necessarily involve
consideration of Appellants’ evidence of non-obviousness (see the Evidence
Appendix attached to the Brief, including Figures 1 and 2).
4
Page: Previous 1 2 3 4 5 Next
Last modified: September 9, 2013