Ex Parte Ziech et al - Page 7

                Appeal 2007-2613                                                                              
                Application 10/660,239                                                                        

                Kittle in a rigid axle as it is merely applying a known technique to a known                  
                device to achieve a predictable result. KSR at 1740, 82 USPQ2d at 1396.                       
                      In regards to Pitzer, we regard Pitzer’s teaching of tapered sleeves in a               
                bushing to be a teaching of general utility with respect to connecting rods or                
                shafts and surrounding members.  As such, it is our view that the disclosures                 
                of Smith and Pitzer would have rendered the subject matter of claims 1-5,                     
                7-12, 14, 18 and 20 prima facie obvious to one of ordinary skill at the time                  
                Appellants’ invention was made. This is combining prior art elements                          
                according to the method taught by Pitzer to achieve a predictable rigid                       
                coupling of axle to trailing arm. See KSR at 1739, 82 USPQ2d at 1395.                         
                      Appellants’ arguments deal in detail with the Fig. 47 and Fig. 48                       
                embodiments of the Smith patent.  The Examiner’s reliance thereon may                         
                have contributed to Appellants’ selection of this argument.  Since we rely on                 
                the general disclosure of Smith and not specifically on the disclosure of the                 
                embodiments of Fig. 47 and Fig. 48, the thrust of the rejection has been                      
                changed.  Therefore, in an abundance of caution, we are designating our                       
                decision as a new ground of rejection under 37 CFR 41.50(b) and giving                        
                Appellants the opportunity to further prosecute the claims before the                         
                Examiner.                                                                                     
                                              CONCLUSION                                                      

                      The rejection of claims 1-3 and 5-7 under 35 U.S.C. 103 as being                        
                unpatentable over Smith in view of Kittle is affirmed.                                        

                      The rejections of claims 1-5, 7-12, 14, 18, and 20 under                                


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