Appeal 2007-4070
Application 10/625,531
limitation of claim 1 (Answer at 3; FF 12–13). Appellant did not dispute the
Examiner's findings based on annotated Harima Figure 1. There is no
apparent reason why Appellant could not have presented rebuttal arguments
as to why the circled structure in annotated Harima Figure 1 did not meet the
limitation of the wire rest component of the retainer of claim 1. Having
failed to do so, we deem such arguments waived. Accordingly, we affirm
the rejection of claim 1 under 35 U.S.C. § 102(b) over Harima. Since
Appellant has not offered independent arguments against the rejection of
claims 2-5, 7-8 and 10 under 35 U.S.C. § 102(b) as anticipated by Harima,
we affirm that rejection without further discussion. 37 C.F.R. §
41.37(c)(1)(vii).
IV. Obviousness
A claimed invention is not patentable if the differences between what
is claimed and the prior art are such that the claimed invention as a whole
would have been obvious to one of ordinary skill in the art. 35 U.S.C. §
103(a). The legal conclusion of obviousness must be based on factual
findings concerning the scope and content of the prior art, the differences
between the prior art and the claimed invention, and the level of ordinary
skill in the art. So-called secondary considerations, including evidence of
unexpected results, may provide indicia of nonobviousness or obviousness.
KSR Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1389
(2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 148
USPQ 459, 467 (1966). The inquiry into obviousness is "expansive and
flexible" and not governed by rigid rules. KSR, 127 S.Ct. at 1739, 82
USPQ2d at 1389. On appeal, the procedural burden is on Appellant to
demonstrate reversible error by the Examiner.
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