Appeal No. 2002-1749
Application No. 09/395,270
Independent claim 1 is directed to a method of applying a
carpet to a subfloor and calls for the steps of providing a
dimensionally stable sheet, placing the sheet on an existing
subfloor, providing a carpet, and placing the carpet on the
sheet.
As framed by appellant (see pages 4 to 7 of the answer), the
dispositive issue with respect to the standing rejection of claim
1 as being unpatentable over the combined teachings of Wyman and
SIGA is whether the applied prior art teaches or suggests the
order or sequence of steps called for in the claim. More
particularly, appellant argues as follows:
The method disclosed in Wyman does not disclose the
steps of providing a dimensionally stable sheet,
placing the sheet on an existing subfloor, and then
placing a carpet on the sheet as recited by the
Appellant . . . . Appellant strenuously disagrees with
the Examiner’s conclusion [that the sequence of steps
is an obvious matter of choice] . . . . [T]he sequence
of Appellant’s steps are critical and are not merely an
obvious design choice. [Brief, page 5; emphasis
added.]
Unless the steps of a method claim actually recite an order,
the steps are not ordinarily construed to require one. Altiris
Inc. v. Symantec Corp., 318 F.3d 1363, 1369, 65 USPQ2d 1865, 1869
(Fed. Cir. 2003); Interactive Gift Express, Inc. v. CompuServe
Inc., 256 F.3d 1323, 1342-43, 59 USPQ2d 1401, 1416 (Fed. Cir.
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