Ex Parte Beitz et al - Page 13
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Appeal No. 2007-0517
Application No. 10/768,647
suggest a particular fluid permeability. On this record before us, it follows that the
Examiner erred in rejecting claims 1-11 as anticipated over Roslund or obvious
over Roslund in view of the additional cited references.
As discussed above, Roslund teaches that the fluid permeability of its
spliced region is maintained to a large degree. Unlike claim 1, Applicant’s claim
12 merely requires that the splicing region have a fluid permeability at least about
25% as great as the fluid permeability of the absorbent materials being joined.
Roslund explicitly teaches that its cement strip splicing material maintains to
a large degree the porosity and absorbing capacity of the absorbent materials being
joined. (Roslund, col. 1, ll. 8-14). This teaching is a factual basis for finding that a
majority of the fluid permeability is maintained, i.e., something greater than 50 %.
We find that one of ordinary skill in the art reading Roslund would understand that
Roslund forms a splicing region at least about 25 % fluid permeability of the
absorbent materials being joined.
Under the principles of inherency, if a prior art device in its normal and
usual operation will perform Applicant’s claimed function, then the claim will be
considered anticipated by the prior art device. In re King, 801 F.2d 1324, 1326,
231 USPQ 136, 138 (Fed. Cir. 1986). Accordingly, as Roslund teaches that a
majority of the porosity and absorbing capacity is maintained, we find that the
Examiner has presented a prima facie case of anticipation as to Applicant claim 12.
Applicant contend that Roslund fails to teach, explicitly or inherently a
splicing material having at least about 25% as great a fluid permeability as the
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Last modified: November 3, 2007