Appeal No. 95-2622
Application 08/125,524
than 3.8 and less than (5.88M-10+N). The applicants have
calculated the maximum denier of McKay to be 10.88. By
contrast, the required diameter in the present claims
would
result in a product several times as big, ranging from
78-22,608 denier per filament. It is respectfully
submitted
that the skilled artisan would have no reason to
extrapolate
any teachings relating to the fine textile filaments
shown
in either of the McKay patents to the large monofilaments
of
the present claims, particularly when the basic
advantages
of the McKay patents, that is, visual aesthetics, are
entirely inapplicable to the present striated
monofilaments,
designed for papermaking belts.
The argued distinction based on utility is immaterial to
the patentability of the claimed subject matter under 35
U.S.C. § 103 in view of the monofilament taught by McKay. See
In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed.
Cir. 1990)
(in banc), cert. denied sub nom. Dillon v. Manbeck, 500 U.S.
904 (1991)(footnote omitted):
Each situation must be considered on its own facts, but
it is not necessary in order to establish a prima facie
case of obviousness that both a structural similarity
between a claimed and prior art compound . . . be shown
and that there be a suggestion in or expectation from
the prior art that the claimed compound or composition
will have the same or a similar utility as one newly
discovered by applicant . . . .[T]he statement that a
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