Interference No. 102,712
In view of the foregoing, the APJ concluded that the
cutting tool defined by Suzuki’s involved claims would have
been prima facie obvious within the context of 35 U.S.C. § 103
from the subject matter embraced by Augustine’s involved
claims especially when taken in view of knowledge available in
the prior art, as represented by the Ekstrom UK reference. We
most emphatically agree.
As a basis for contesting the denial of its motion,
Suzuki argues that a generic disclosure does not necessarily
establish a prima facie case of obviousness as to a species.
In support of this proposition, Suzuki primarily relies upon
In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir.
1994), and In re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941,
1943 (Fed. Cir. 1992). We agree with Augustine that Baird and
Jones are distinguishable on their facts since, here,
Augustine’s claims are not merely generic but, also,
specifically recite Suzuki’s matrix material (TiC) and coating
materials (TiC, TiN, TiCN) in a Markush group format. In
addition, some of Augustine’s claims, as well as the Ekstrom
UK reference, point specifically to SiC whiskers for use as a
reinforcing material in ceramic cutting tools. In
contradistinction, the prior art involved in Baird and Jones
17
Page: Previous 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Next
Last modified: November 3, 2007