Appeal No. 2005-2445
Application No. 10/245,663
find that heat resistant molded parts manufactured in accordance
with the Waggoner disclosure would appear to inherently possess
the requisite properties, or be capable of performing the
function, incident to use as ovenware.
Rejection is proper if a prior art article inherently
possesses a property, or the capability of accomplishing a
function, recited in the claims even if that property or function
is not disclosed. Cf. In re Yanush, 477 F.2d 958, 959-60,
177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F.2d 576, 579-80,
152 USPQ 235, 237-38 (CCPA 1967).
Further, in the event of further prosecution, the examiner
should consider applying or reinstating the grounds of rejection
under 35 U.S.C. § 103 since, in our view, it would have been
prima facie obvious within the context of 35 U.S.C. § 103 to use
the heat resistant LCP composition of Waggoner to construct
molded parts for any well known application requiring use of
high-temperature materials, e.g., molded articles used in ovens,
namely ovenware.
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007