Appeal No. 2002-1533
Application No. 09/055,377
select a known material on the basis of its suitability
for the intended use as a matter of obvious design
choice. In re Leshin, [277 F.2d 197,]125 USPQ 416
[CCPA 1960].
We cannot accept the examiner’s position. First, the
examiner’s determination that Staggs employs evacuated air as an
insulating medium is simply incorrect. As clearly stated by
Staggs (see, for example, column 22, lines 53-59, and column 27,
lines 45-59), the space 38 between the exterior cup 14 and the
outer wall member 40 is dead air space (i.e., made up of room
air). Second, there is no factual support for the examiner’s
assertion to the effect that one of ordinary skill in the art
would consider appellant’s use of foam insulation in the manner
particularly called for in claim 1 to be an “obvious expedient”
or “matter of obvious design choice.”1 Third, Staggs expressly
teaches away from the use of foam insulation. See column 27,
lines 52-57. Fourth, even if Zimmerman were modified in the
manner proposed by the examiner, the subject matter of claim 1
would not necessarily result because the modified Zimmerman
1In this regard, the examiner’s reliance on a per se rule
such as that derived from In re Leshin, 277 F.2d 197, 198-99,
125 USPQ 416, 417-18 (CCPA 1960) (that selection of a known
material based on suitability for the intended use is not
normally considered to be patentable) does not suffice to make up
for the substantial deficiencies in the factual basis for the
rejection.
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