Appeal 2007-1827
Application 10/001,324
comfort (col. 5, ll. 12-13). The Examiner merely relies upon a per se rule of
obviousness. As stated by the Federal Circuit in In re Ochiai, 71 F.3d 1565, 1572,
37 USPQ2d 1127, 1133 (Fed. Cir. 1995), “reliance on per se rules of obviousness
is legally incorrect and must cease.”
The Examiner argues that “[t]he elimination of the step of the first and
second transmissions being set temporarily in a speed stage outside of a range
between the origin and destination speed stages may not be desired in all
environments” (Answer 13-14). The Examiner, however, does not provide
evidence or technical reasoning in support of that argument. The Examiner’s mere
speculation is not sufficient for establishing a prima facie case of obviousness.
For the above reasons we reverse the Examiner’s rejections.1
New ground of rejection
Under 37 C.F.R. § 41.50(b) we enter the following new ground of rejection.
Claims 1-7, 13-28, and 34-38 are rejected under 35 U.S.C. § 112, first
paragraph, written description requirement.
A specification complies with the 35 U.S.C. § 112, first paragraph, written
description requirement if it conveys with reasonable clarity to those skilled in the
art that, as of the filing date sought, the inventor was in possession of the
invention. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
1111, 1117 (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983); In re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465,
1 The Examiner does not rely upon Ethington, Colbert or Spencer for any
disclosure that remedies the above-discussed deficiency in Browning.
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