Appeal No. 2002-1567 Page 7
Application No. 09/197,729
In this regard, to the extent appellants may have recognized
another potential advantage of the product suggested by Aylward
that would have been obtained by otherwise following the
teachings of the patent, that recognition does not necessarily
form a basis for patentability. See In re Woodruff, 919 F.2d
1575, 1577-1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). The
choice to emphasize different terminology or characteristics in
describing a product does not, by itself, render such a product
patentable. See In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82
(CCPA 1975). We further note that inherency is not necessarily
coterminous with the knowledge of those of ordinary skill in
the art since artisans of ordinary skill may not recognize the
inherent characteristics or functioning of the prior art. See
In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir.
1986).
Given the above, we do not find appellants unsubstantiated
arguments persuasive as to a patentable distinction between the
product of representative claim 1 and that of Aylward.
Accordingly, on this record, we shall sustain the examiner’s
§ 103 rejection of claims 1, 2, 5, 7-12, 15, 17 and 18.
With regard to the Group 2 claims (dependent claims 13 and
14), appellants acknowledge that Aylward generally discloses the
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