Appeal No. 1996-2811
Application 08/402,670
obvious to one of ordinary skill in the art. Ghosh
et al. even teach that their ceramic material has a
good resistance to wear (col. 1, first paragraph).
Also, the discovery of a new property or use of a
previously known composition, even when that
property and use are unobvious from the prior art,
can not impart patentability to claims to the known
composition. Titanium Metals Corp. v. Banner, 778
F2d 775, 780, 782, 227 USPQ 773, 777-78 (Fed. Cir.
1985). It is therefore the examiner’s position that
the new use (i.e. guide rail) of a known composition
(in this case, admitted by appellants to be known in
the art-top of page 4, appellants’ specification)
can not impart patentability to claims to the known
composition.”
In addition to the foregoing, the examiner has also noted
(answer, page 5) that Yoshida teaches that the use of ceramic
materials as guide rails is known in the art, and that since
it is well known in the art that zirconium is a ceramic
material having properties of excellent wear resistance and
toughness, it would have been apparent to one of ordinary
skill in the art
“that he or she had the obvious design choice
for selecting a specific known ceramic material of
high toughness and wear resistance (e.g., a zirconia
composition such as those taught by Ghosh et al. and
Chatterjee et al.) as a material for a guide rail
(in accordance with the teachings of Yoshida).”
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