Appeal 2007-0009
Application 10/345,461
1 to make Appellant’s invention. See United States v. Adams, 383 U.S. 39
2 (1966); In re Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed.
3 Cir. 2006); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
4 Patrick, Co., 464 F.3d 1356, 1360-1361, 80 USPQ2d 1641, 1645 (Fed. Cir.
5 2006). The mere fact that all the claimed elements or steps appear in the
6 prior art is not per se sufficient to establish that it would have been obvious
7 to combine those elements. United States v. Adams, id; Smith Industries
8 Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d
9 1415, 1420 (Fed. Cir. 1999).
10
11 ANALYSIS
12 We note at the outset Appellant's statement (Br. 8) that "[t]he use of
13 the term 'steel' in applicant's claims is merely didactic and is not intended to
14 impart any patentable weight to the claims." From the description in Bright
15 of having fence posts and rails of steel, and the above statement by
16 Appellant, we find that an artisan would have been motivated to make the
17 fence rails and posts of Pettit out of steel, to prevent rusting.
18 In addition, although we find from the description in Pettit that the rails have
19 a friction fit with each other and that they are able to move relative to each
20 other to allow for expansion and contraction, we find no clear teaching that
21 the rails would abut one another during expansion. We would have to resort
22 to unfounded speculation to find that the rails between the line posts of Pettit
23 abut one another during expansion periods, as advanced by the Examiner
24 (Answer 6). However, from the disclosure of Pettit (fact 6) that the fence
6
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Last modified: September 9, 2013