Appeal 2007-3126
Application 10/359,275
73 F.3d 1085, 1090 (Fed. Cir. 1995) (the Browning Hi-Power handgun does not
teach away from the claimed invention; while it fails to disclose a converging
frame, it does not warn a person against using convergence); Icon Health and
Fitness, 496 F.3d at 1381 (“A reference may be said to teach away when a person
of ordinary skill, upon reading the reference, would be discouraged from following
the path set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.”) (citation omitted).
For the foregoing reasons, Appellants have not demonstrated any error in the
Examiner’s rejection of independent claims 1 and 21.
B. The dependent claims
Appellants’ argument that the rejection should be reversed with respect to
dependent claims 2, 4, 5, and 10 because “the rejection fails to provide any
indication of where the subject matter recited in these claims is believed to be
found in Abdelgawad and Zunick” (Br. 4-5) is also unconvincing. Appellants were
in a position to address the merits of the rejection of these claims. Neither
reference is complex and the scope of these claims is not at issue (claim 2 recites a
“fitting” and “pin socket assembly”; claim 4 recites “radially-wound epoxy glass”;
claim 5 recites “a cross pin”; and claim 10 recites a “vacuum fault interrupter”). In
effect, Appellants are simply noting what the claims recite, which does not
constitute an argument on the merits. See 37 C.F.R. § 41.37(c)(1)(vii) (2006) (“A
statement which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”).
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