Appeal No. 2004-0303
Application 09/439,457
In order to establish a prima facie case of obviousness, the examiner must show that some
objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in this art would have led that person to
the claimed invention as a whole, including each and every limitation of the claims arranged as
required by the claims, without recourse to the teachings in appellants’ disclosure. See generally,
In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool
Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir.
1996); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Fritch,
972 F.2d 1260, 1265-66, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re Laskowski, 871 F.2d
115, 10 USPQ2d 1397 (Fed. Cir. 1989); In re Fine, 837 F.2d 1071, 1074-76, 5
USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531-32 (Fed. Cir. 1988).
In giving the claim terms their broadest reasonable interpretation in light of the written
description in the specification as interpreted by one of ordinary skill in this art, see, e.g., In re
Thrift, 298 F.3d 1357, 1364, 63 USPQ2d 2002, 2006 (Fed. Cir. 2002); In re Morris, 127 F.3d
1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989), the plain language of appealed claim 1 specifies a
method for making an injection molded pump diaphragm which has one side resistant to
chemicals, comprising at least steps which result in injection molding a first diaphragm layer,
applying an adhesive to a side of the first layer, placing the layer with the adhesive in a mold and
injection molding a second diaphragm layer thereon, wherein the polymer material used to
prepare the first diaphragm layer has a higher melt temperature than the polymer material used to
prepared the second diaphragm layer, one of the layers being resistant to chemicals.
The examiner correctly finds that Fingar discloses a process of preparing a two layer
pump diaphragm wherein the polymer material used to prepare the first layer is chemical
resistant polytetrafluoroethylene (PTFE) which has a higher melt temperature than the
thermoplastic elastomeric blend of a thermoplastic material and a fully vulcanized thermoset
elastomer which is the polymer material used to prepared the second layer (answer, page 4; see
also Fingar, col. 1, line 57, to col. 2, line 15). The difference between the claimed process and
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