Appeal 2007-1584
Application 10/689,337
The patentability of Appellant’s claims turns on the scope and
meaning of the claim phrase “a web substantially spanning said arcuate
support and said body along said length of said arcuate support.” As the
Examiner found and Appellant does not dispute, the remaining limitations of
claim 1 are met by DeArmond’s teachings (Answer 3).
The Examiner interprets the disputed limitation in two ways (Answer
3-5). We adopt his second, alternative, interpretation (id. at 4-5). Thus, the
web must “substantially span” the length of the arcuate support. This
interpretation is consistent with teachings in the Specification (see, e.g.,
Appellant’s Fig. 1). As the Examiner found, given this interpretation, the
only difference between the web 48 taught by Weisgerber and that claimed
(50 in FIG. 1) is size (Answer 4). As the Examiner further found: “Since
the web (which is a brace or strut) is for strength, one skilled in the art would
have been motivated to increase the distance of the web along the body
member to therefore increase the strength of the device” (id.).
With regard to the Examiner’s other findings and responses, we adopt
them here and conclude they are sufficient to support his prima facie case of
unpatentability and thus affirm his § 102(e) rejection for the reasons given
by the Examiner.
Appellant objects to the Examiner’s reliance on the level of skill in the
art to combine DeArmond and Weisgerber without providing any supporting
affidavits, quoting In re Jones, 958 F.2d 347, 351 (Br. 8-9). According to
Appellant, such evidence of motivation to combine is required in the
absence of a teaching or suggestion in the references themselves (Br. 9).
The Supreme Court’s reasoning in KSR Int’l v. Teleflex Inc., 127 S.
Ct. 1727 (2007) supports the Examiner’s rationale for combining DeArmond
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