Appeal 2007-1315
Application 09/828,437
1 As to the Appellants’ argument that the combination would change the
2 principle of operation, citing In re Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA
3 1959), while Ratti held that a combination of references that would require a
4 substantial reconstruction and redesign of the elements shown the prior art as well
5 as a change in the basic principles under which the prior art was designed to
6 operate is not a proper ground for an obviousness rejection, 270 F.2d at 813, 123
7 USPQ at 352, what Ratti was referring to was reconstruction and redesign of how
8 all the elements interrelate in a manner relying on operational principles
9 unforeseeable to a person of ordinary skill.
10 In Ratti, claims were directed to an oil seal comprising a bore engaging portion
11 with outwardly biased resilient spring fingers inserted in a resilient sealing
12 member. The primary reference relied upon in a rejection based on a combination
13 of references disclosed an oil seal wherein the bore engaging portion was
14 reinforced by a cylindrical sheet metal casing. Its seal was incompressible and the
15 device required rigidity for operation, whereas the claimed invention required
16 resiliency.
17 But Jones’ processing travel requests based on a user's travel destination goal
18 (FF 03), coupled with Among’s managing a tour product purchase (FF 10), would
19 not do such violence to the operating principles of Jones. Modifications by
20 substitution, even if they omit the subject matter portion which a prior art patentee
21 apparently regarded as his contribution to the art along with such advantages as it
22 might provide, where the modified apparatus is obvious in view of the prior art and
23 where the retained portion of the subject matter will operate on the same principles
24 as before, “are not authority for holding a rejection improper under such
25 circumstances.” In re Umbarger, 407 F.2d 425, 430-31, 160 USPQ 734, 738
22
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Last modified: September 9, 2013