Appeal 2007-1751
Application 09/769,511
1 USPQ 349 (CCPA 1959), while Ratti held that a combination of references that
2 would require a substantial reconstruction and redesign of the elements shown the
3 prior art as well as a change in the basic principles under which the prior art was
4 designed to operate is not a proper ground for an obviousness rejection, 270 F.2d at
5 813, 123 USPQ at 352, what Ratti was referring to was reconstruction and redesign
6 of how all the elements interrelate in a manner relying on operational principles
7 unforeseeable to a person of ordinary skill.
8 In Ratti, claims were directed to an oil seal comprising a bore engaging portion
9 with outwardly biased resilient spring fingers inserted in a resilient sealing
10 member. The primary reference relied upon in a rejection based on a combination
11 of references disclosed an oil seal wherein the bore engaging portion was
12 reinforced by a cylindrical sheet metal casing. Its seal was incompressible and the
13 device required rigidity for operation, whereas the claimed invention required
14 resiliency.
15 But Haralambopoulos’ user actions (FF 16), coupled with Greene’s automated
16 billing rates (FF 08), would not do such violence to the operating principles of
17 Greene. Modifications by substitution, even if they omit the subject matter portion
18 which a prior art patentee apparently regarded as his contribution to the art along
19 with such advantages as it might provide, where the modified apparatus is obvious
20 in view of the prior art and where the retained portion of the subject matter will
21 operate on the same principles as before, “are not authority for holding a rejection
22 improper under such circumstances.” In re Umbarger, 407 F.2d 425, 430-31, 160
23 USPQ 734, 738 (CCPA 1959), distinguishing Ratti. In this case, modifying
24 Greene by applying Haralambopoulos’ user actions still operates on the principles
17
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: September 9, 2013