Appeal No. 1996-1699
Application No. 08/077,681
as a blueprint to reconstruct the claimed invention from the
isolated teachings of the prior art. See, e.g., Grain
Processing Corp. v. American Maize-Products Co., 840 F.2d 902,
907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
With this as background, we turn first to the rejection
of claim 1, the only independent claim in the application.
The examiner describes the APA as teaching the method recited
in claim 1, except that the APA method uses particles having
“a size of about 150 mesh” rather than particles having a size
of 400 to 1500 mesh as required by claim 1 (appellants’
specification, page 2 and answer, page 3).
The examiner relies on Reed and Oliver to “demonstrate
that one having ordinary skill in the art realizes [sic, would
have realized] that use of an abrasive having a relatively
large particle size well [sic] result in a more coarse removal
of
material relative to an abrasive having relatively small
particle size” (answer, page 3). Based on the teachings of
the APA, Reed and Oliver, the examiner concluded that it would
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