Appeal No. 2002-0794
Application 09/037,584
monofilament entirely coated with abrasive particles as the cutting line in place of the
monofilament cutting line of Boland in which a lower concentration of abrasive particles are
embedded in the line with a reasonable expectation of avoiding the problem of cutting line
integrity with higher concentrations of abrasive particles taught by Boland. Indeed, on this
record, we find that Boland would have discouraged any expectation that the problem of line
integrity with higher concentration of abrasive particles can be avoided by using a monofilament
line entirely coated with abrasive particles.4
Thus, we conclude that on this record, the examiner has not established that, prima facie,
one of ordinary skill in this art would have combined teachings of Boland and Young to arrive at
the claimed cutting line encompassed by the appealed claims, and that with respect to appealed
claim 14, Harbeke does not add the necessary evidence to support a prima facie case because, as
appellant points out, this reference does not disclose a cutting line that contains abrasive
particles.
Accordingly, we reverse both grounds of rejection.
The examiner’s decision is reversed.
Reversed
4 See In re Gurley, 27 F.3d 551, 552-53, 31 USPQ2d 1130, 1131-32 (Fed. Cir. 1994) (“A
reference may be said to teach away when a person of ordinary skill, upon reading the reference
would be discouraged from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant. The degree of teaching away
will of course depend on the particular facts; in general, a reference will teach away if it suggests
that the line of development flowing from the reference’s disclosure is unlikely to be productive
of the result sought by the applicant. [Citations omitted.]”).
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