Appeal No. 2001-1466
Application 09/055,899
difference between a claim and the prior art normally would
involve an unpatentable modification, under some circumstances
the difference may impart patentability if the applicant meets
the burden of showing that it is critical in the sense that it
produces a new and unexpected result different in kind and not
merely in degree from the results of the prior art (see Aller
at 220 F.2d 456, 105 USPQ 235). In the present case, Schultz
expressly and very forcefully teaches away from the
“saturation” limitation in claim 1. Thus, Schultz clearly
fails to establish
a prima facie case that this limitation involves an
unpatentable or obvious modification. Consequently, the
appellant is under no burden to show criticality in order to
demonstrate patentability. This deficiency in Schultz finds
no cure in Capezzuto and/or Gueret which were applied by the
examiner for their disclosures of compressible reservoirs.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claim 1, or claims 2, 3, 5 through 11,
25, 26, 33 and 37 through 41 which depend therefrom, as being
unpatentable over Schultz in view of Capezzuto and Gueret.
SUMMARY
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