Ex Parte Schmidt - Page 3

                Appeal 2007-0505                                                                                 
                Application 10/402,476                                                                           

                Claim 17 as unpatentable over Quinlan and Marx in view of Daly and                               
                further in view of Nishimura (id. 9); and                                                        
                Claim 19 as unpatentable over Quinlan and Marx in view of Hager (id.).                           
                       The dispositive issue in this appeal is whether the combined teachings                    
                of Quinlan and Marx, the combination common to all grounds of rejection,                         
                renders the claimed methods encompassed by independent claims 1 and 16                           
                prima facie obvious to one of ordinary skill in this art as contended by the                     
                Examiner.  A discussion of the remaining references relied on is not                             
                necessary to our decision.                                                                       
                       The plain language of representative claim 1 specifies a method                           
                comprising at least the recited sequential steps which result in the insert                      
                molded with a first material into the lost core assembly; the insert/first                       
                material containing “lost core” assembly molded with a second material into                      
                a plastic article such that the outer surface of the insert is completely covered                
                by the second material; and removing the first material from the insert/first                    
                material/second material containing plastic article to form a cavity in the                      
                plastic article including the insert, wherein the insert defines a portion of,                   
                that is, not the entire, surface of the cavity.  The claim language requires that                
                the first and second material must be moldable and in fact molded, that the                      
                insert used in the first step becomes part of the final plastic article.  The                    
                method of fabricating an outboard assembly encompassed by claim 16                               
                specifies the same method steps as claim 1.                                                      
                       We find Quinlan would have acknowledged that the “lost core                               
                method” was known in the art for forming molded articles with internal                           
                surfaces, “wherein metal or salt was formed in the same shape as the desired                     
                internal passage or irregular surface;” “[t]he article . . . molded around the                   

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