Appeal 2006-2714
Application 10/228,898
Examiner in support of any proposed modification to Sims to meet the claim
language.
To serve as an anticipation when the reference is
silent about the asserted inherent characteristic,
such gap in the reference may be filled with
recourse to extrinsic evidence. Such evidence
must make clear that the missing descriptive
matter is necessarily present in the thing described
in the reference, and that it would be so recognized
by persons of ordinary skill.
Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991). The Examiner’s use of the secondary
references as extrinsic evidence that steel wool is inherently capable of use
in sanding and would be so recognized by persons of ordinary skill in the art
is thus appropriate in the rejection of claims 5-9 as anticipated by Sims.
Moreover, we find that the secondary references cited by the
Examiner do evidence that steel wool is recognized by persons of ordinary
skill in the sanding art for use as a sanding surface for sanding many
different types of surfaces (Deware, col. 1, ll. 16-17, col. 2, ll. 63-67;
Evensen, col. 1, ll. 18-19, col. 6, ll. 11-19; Carter, col. 1, ll. 16-17). We
therefore conclude that Sims’ V-shaped steel wool pad 88 meets the
“sanding pad” limitation of claim 5 and that Sims’ cleaning, polishing, and
waxing device, which is capable of sanding drywall surfaces by virtue of the
abrasive steel wool pad, is a “drywall sanding device” as recited in the
preamble of claim 5.
We appreciate that Sims does not expressly disclose use of the device
for sanding, but claim 5 is directed to a device, not a method of using the
device. The recitation of an intended use for an old product does not make a
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