Appeal No. 97-0767
Application No. 08/383,996
explicitly disclosed by the prior art references to render the
claim unpatentable under section 103 (see In re Dillon, 919 F.2d
688, 692, 696, 16 USPQ2d 1897, 1901, 1904 (Fed. Cir. 1990) (in
banc), cert. denied, 500 U.S. 904 (1991)) and “[t]he fact that
appellant has recognized another advantage which would flow
naturally from following the suggestion of the prior art cannot
be the basis for patentability when the differences would
otherwise have been obvious” (Ex parte Obiaya, 227 USPQ 58 (BPAI
1985), aff'd.mem., 795 F.2d 1017 (Fed. Cir. 1986)). Similarly,
the mere recognition of latent properties in an otherwise obvious
product in the prior art does not render such a product
unobvious. See In re Prindle, 297 F.2d 251, 254, 132 USPQ 282,
283-84 (CCPA 1962).
With respect to claim 3 the appellant notes that Fox does
not teach a valve formed by a rubber plug that is penetrable by a
hypodermic needle. While this is true, the appellant has not
disputed the examiner’s position that such valves are common and
well known and that it would have been obvious to utilize such a
valve in the bat of Fox, as modified by Tanigawa.
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