Appeal No. 96-1633
Application 08/119,245
1788, 1792 (Fed. Cir. 1988). That court has also cautioned
against focusing on the obviousness of the differences between
the claimed invention and the prior art rather than on the
obviousness of the claimed invention as a whole as § 103
requires. See, e.g., Hybritech Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1383, 231 USPQ 81, 93 (CCPA 1986), cert.
denied, 480 U.S. 947 (1987). In the present instance, we
think that the examiner has lost sight of the claimed
invention as a whole and has improperly focused upon the
supposed obviousness of the differences between the claimed
invention and the prior art cited against the claims.
Appellants’ invention as a whole in this case is a
composite gasket capable of establishing both “wet” and “dry”
seals, wherein the gasket has a tacky, viscous, flowable joint
sealing composition pre-applied to the resilient member, i.e.,
applied at a time prior to assembly of the gasket with the
panel and supporting frame. This is reflected in method claim
13 by calling for the steps of “advancing a continuous length
of a flexible resilient member,” and “feeding a tacky,
viscous, flowable joint sealing composition onto [an] inner
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