Appeal No. 2002-0794
Application 09/037,584
is not carried on the surface of the monofilament core and does not entirely cover an outer
surface of the core as required by the appealed claims.3 The reference further teaches that
“[h]igher concentrations of grit improves cutting ability but decreases line integrity” (col. 3, lines
66-67).
The examiner recognizes that the cutting line of Boland is limited by line integrity and
relies on Young, in particular, col. 16, lines 20-35, to show that a fiber can be continuously
coated by an adhesive which is then covered by abrasive particles to continuously coat “the entire
outer surface . . . to maximize coating properties such as abrasion” (answer, pages 4-5). The
examiner further takes the position “that using particles joined by a binder to the surface of
Boland would not destroy the function of Boland” (answer, page 7).
On this record, we must agree with appellant. It is well settled that the examiner must
point to some teaching, suggestion or motivation in the prior art to support the combination of
references. See Lee, supra; Smith Industries medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d
1347, 1356, 51 USPQ2d 1415, 1420-21 (Fed. Cir. 1999); In re Mayne, 1043 F.3d 1339, 1342,
41 USPQ2d 1451, 1454 (Fed. Cir. 1997); Fritch, 972 F.2d at 1266, 23 USPQ2d at 1783; ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 9292, 933 (Fed. Cir.
1984); In re Keller, 642 F.2d 413, 425-26, 208 USPQ 871, 881-82 (CCPA 1981); see also Dow
Chem., 837 F.2d at 473, 5 USPQ2d at 1531 (“The consistent criterion for determination of
obviousness is whether the prior art would have suggested to one of ordinary skill in the art that
[the claimed process] should be carried out and would have a reasonable likelihood of success,
viewed in the light of the prior art. [Citations omitted] Both the suggestion and the expectation of
success must be founded in the prior art, not in the applicant’s disclosure.”).
While we agree with the examiner that Young would have reasonably suggested to one of
ordinary skill in the art that a fiber entirely coated with abrasive particles through an adhesive
would be more abrasive than a fiber which contains a lower concentration of such particles, the
examiner has not established with evidence that this person would have reasonably substituted a
3 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see generally, Fritch, 972 F. at 1264-65, 23 USPQ2d at 1782-83, presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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