Appeal No. 2005-2678
Application 09/992,110
the thread element to separate it from a bonded fibrous material while the bonded fibrous
material is suspended in a liquid” without other limitation with respect to the method, see, e.g.,
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); see also generally, In re Thorpe, 777
F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985), the examiner relies on the position taken
with respect to Didwania and Milding for the finding that “a fiber having the irregular distortion
would necessarily be produced” (supplemental answer, page 7). We agree with appellants
(amended brief, page 9) that there is no evidence in the record to support the examiner’s position
which apparently is based on inherency.
Accordingly, we find that the examiner has failed to establish a prima facie case of
obviousness, and therefore, we reverse the ground of rejection of the appealed claims under
35 U.S.C. § 103(a). See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458
(Fed. Cir. 1998) (“hindsight” is inferred when the specific understanding or principal within the
knowledge of one of ordinary skill in the art leading to the modification of the prior art in order
to arrive at appellant’s claimed invention has not been explained).
We summarily affirm the provisional grounds of rejection under the judicially created
doctrine of obviousness-type double patenting because appellants have stated the intention to file
“appropriate terminal disclaimers. . . if necessary, upon the allowance of claims in the present
application” to obviate these grounds (amended brief, pages 9-10).
The examiner’s decision is affirmed.
Remand
We remand the application to the examiner for consideration of issues raised by the
record. 37 CFR §1.41.50(a)(1) (September 2004); Manual of Patent Examining Procedure
(MPEP) § 1211 (8th ed., Rev. 2, May 2004; 1200-29 – 1200-30).
The record does not show that the claimed fiber and fiber-like materials encompassed by
product-by-process claim 16, the claimed recycled synthetic fibers and fiber-like materials
encompassed by product-by-process claims 17 through 24, and the claimed nonwoven fibrous
web comprising the recycled synthetic fibers and fiber-like material of claim 17 encompassed by
product-by-process claims 25 through 27, have been separately considered with respect to the
recycled synthetic fibers and fiber-like materials taught by Milding alone. See generally,
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