Appellant wins in Ex parte Norris

From within Ex parte JAMES W. NORRIS

Appellant argued:


the modification of Strayer “would ruin the entire
operation of Strayer, as complex valving provided by the two connected
pistons 29 and 49, and valve 30 could not be provided without the rigid
structure” (App. Br. 3-4). These contentions are persuasive.



The Board noted


We understand that the Examiner’s modification of Strayer would
eliminate at least the reservoir piston 29, pressurizing cylinder 49, and piston
50, and substitute McCarty’s “flexible structure” for these elements. As
discussed infra, we agree with Appellant that the Examiner did not articulate
an adequate reason why one of ordinary skill in the art would have modified
Strayer’s pressurized hydraulic reservoir by making this substitution.




Of unappealed claims:



Appellant states that the rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Strayer, McCarty, and Mann (US 4,483,417; iss. Nov. 20,
1984) is not appealed. App. Br. 3. Ex Parte Ghuman, 88 USPQ2d 1478
(BPAI 2008) (precedential) applies. Accordingly, upon return of this
application to the Examiner, claim 4 may be canceled pursuant to MPEP
§ 1215.03. We do not address claim 4 in this appeal.