Appeal No. 1999-0610 Page 18
Application No. 08/601,186
appellants' invention as being biocompatible and lubricious.9
After all, the selection of a known material based on its
suitability for its intended use has been held to be prima
facie obvious. See, e.g., Sinclair & Carroll Co. v.
Interchemical Corp., 325 U.S. 327, 65 USPQ 297, 301 (1945).
Further, substitution of materials will not, in and of itself,
create patentability if the same purpose or function could be
achieved through the old materials. This applies even if the
substituted material is more satisfactory, cheaper, or more
durable. Substitution of materials to be patentable must
bring about a new mode of construction, or new properties or
uses of the article that were not obvious and, in effect, make
the old material obsolete. See Lyle/Carlstrom Associates Inc.
v. Manhattan Store Interiors, Inc., 635 F.Supp. 1371, 1385,
230 USPQ 278, 288 (E.D.N.Y. 1986), aff'd mem., 824 F.2d 977
(Fed. Cir. 1987); accord Graham v. John Deere Co., 383 U.S. 1,
11, 148 USPQ 459, 464 (1966). In this regard, we note for the
Of course, any determinations of obviousness made by the examiner9
should be made in accordance with the "Genus-Species Guidelines" set forth in
Manual of Patent Examining Procedure (MPEP) § 2108.04.
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