Appeal No. 1997-4111 Page 18
Application No. 08/540,947
for constructing the vent plug of Cain for ease of manufacture
and for the benefit of low cost.
The appellants argue (brief, p. 18; reply brief, pp. 4-5)
that there is no disclosure or suggestion in Cain that the
mold venting plug of Figures 3 and 3A could be made of plastic
as set forth in claim 12. We do not agree. In that regard,
Cain specifically teaches that the vent plug can be made of
materials other than stainless steel and machine steel. Thus,
it is our view that one skilled in the art would have been
motivated to use another known material, such as plastic, for
the vent plug of Cain. Under similar circumstances, it has
been determined that the mere substitution of glass for wood
would not support the patentability of a display case.
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
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