Appeal No. 1997-2667
Application No. 07/632,907
In the present case, the examiner does not appear to
dispute appellants’ assertion that neither Watkins nor Niles
describe the claimed thickness and void fraction of a titanium
mesh. Compare Brief, pages 7-9, with Answer, pages 3-5.
Rather, the examiner appears to take the position that the
need to optimize the physical characteristics of a titanium
mesh for a given electrode would have led one of ordinary
skill in the art to a titanium mesh having the claimed
thickness and void fraction. See Answer, page 3-4. However,
as correctly observed by appellants (Brief, page 9):
The reference combination follows the
conventional wisdom, which suggests that: larger void
fraction goes hand-in-hand with larger strand size.
Appellants' unique mesh goes completely contrary to
this conventional wisdom. As void fraction increases
from 49% for the 188 mesh of the British '912 reference,
to 72% for the Niles No. 9 mesh, strand dimension
increases from 0.16 cm. to 0.366 cm. This reference
combination thus guides completely away from
arriving at
the characteristics of Appellants' mesh.
Indeed, this observation is supported by the examiner’s own
evidence, Niles. Thus, we determine that a person having
ordinary skill in the art, upon reviewing the prior art
teachings as a whole, “would [have been] led in a direction
divergent from the path that was taken by the applicant[s].”
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