Appeal No. 2001-2677
Application No. 08/625,008
This conclusion regarding "natural consequences" is based on mere
supposition by the examiner. However, speculation and conjecture
cannot provide a proper evidentiary basis to support a rejection
under § 103.
While the measurement of a physical property may not of
itself impart patentability to otherwise unpatentable claims,
when the measured property serves to point up the distinction
from the prior art, or advantages over the prior art, that
property is relevant to patentability, and its numerical
parameters can not only add precision to the claims but also may
be considered, along with all of the evidence, in determination
of patentability. In re Glaug, 283 F.3d 1335, 1341, 62 USPQ2d
1151, 1155 (Fed. Cir. 2002) (citing Pall Corp. v. Micron
Separations, Inc., 66 F.3d 1211, 1216, 36 USPQ2d 1225, 1228
(Fed. Cir. 1995)(affirming the district court’s definition of
“skinless” as a performance characteristic in accordance with
the measurements of bubble point, flow time, and KL curve)).
In our view, the claimed Vickers hardness in claim 8 or
the surface roughness in claim 15 is part of the heat treating or
cutting step respectively. Seen in this manner, it is clear that
O'Neill does not disclose these specific steps claimed by
appellants.
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