Appeal 2007-0694
Reexamination Control 90/006,433
Patent 5,428,933
has not established a legally sufficient basis for combining the teachings of
the prior art. Patentee may sustain its burden by showing that where the
Examiner relies on a combination of disclosures, the Examiner failed to
provide sufficient evidence to show that one having ordinary skill in the art
would have done what Applicant did. United States v. Adams, 383 U.S. 39
(1966); In re Fridolph, 134 F.2d 414, 416, 57 USPQ 122, 124 (CCPA 1943)
(does the prior art suggest doing the thing which the appellant has done?)
ANALYSIS
We begin our analysis of the rejections on appeal by construing the
disputed claim term “substantially the same dimension.”
A. Claim Construction
Patentee’s independent claims recite that the projections and recesses
are substantially the same dimension. (Appeal Br., Claims Appendix, claims
1, 11, 17, 18, 19 and 30). Patentee and the Examiner agree that the term
“substantially” permits some variation. Patentee and the Examiner disagree
however, on the amount of variation permitted.
Patentee states that the term “substantially” is used consistently
throughout the specification in its ordinary and common manner. (Appeal
Br. at 12). Patentee, citing a declaration from the inventor, states that the
term “substantially” refers to minor variations that are inherent in the
manufacturing process and material. (Appeal Br. at 12-13).
The inventor’s, Mr. Philippe’s, declaration states that he has worked
in the concrete construction industry for over twenty-five (25) years and that
he is familiar with the insulating concrete form industry. (Philippe Dec.,
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