Appeal No. 95-4246
Application 08/201,052
wall “extending transversely from the end of the barrel” in
that the radially extending flange of the modified tip member
clearly would include at least a portion adjacent the
periphery of the flange that “extend[s] transversely” from the
end of the barrel.
On page 14 of the brief, appellant argues that “[w]hen a
combination is properly made under Section 103, the
disclosures being combined must specifically teach a structure
which solves the same problem encountered by the appellant,”
and cite In re Wright, 848 F.2d 1216, 6 USPQ2d 1959 (Fed. Cir.
1988) in support of this position. We note, however, that the
court in In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901
(Fed. Cir. 1990) (en banc), cert. denied, 500 U.S. 904 (1991)
overruled Wright on this point. The court also made it clear
in Dillon at 919 F.2d 693, 16 USPQ2d 1901, that while all
evidence of the properties of the claimed subject matter and
the prior art must be considered in determining the ultimate
question of patentability, the discovery that a claimed
invention possesses a property not disclosed for the prior art
subject matter does not by itself defeat a prima facie case of
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