Appeal No. 2005-2556
Application No. 10/142,512
Appellants state that the document must disclose or suggest the
properties of the claimed invention for inherency to attach. On
page 4 of the reply brief, appellants also argue Yamada does not
suggest the problem of flutter that is solved by their
invention. However, the examiner has found that Yamada
discloses all of the claimed limitations but for a recited
functional property of the forming fabric. As such, it is
incumbent upon appellants to show that the flat yarn-containing
fabric disclosed in Yamada does not actually possess the
characteristics recited in appellants’ claims. Appellants have
not done so in the instant case. See In re Ludtke, 441 F.2d
660, 664, 169 USPQ 563, 566-567 (CCPA 1971)(when an alleged
distinction between appellants’ claims and the reference is
recited in functional language, it is incumbent upon appellants
to show that the structure disclosed by the reference does not
actually possess such characteristics).
In the paragraph bridging pages 4-5 of the reply brief,
appellants also argue that there is no exact identity that can
be found in Yamada upon which the examiner relies upon
inherency. Appellants argue that Yamada merely teaches a
general statement that a yarn having at least one of the many
shapes described may be useful in a variety of different
technologies. Appellants argue Yamada does not describe any
utility of such shapes and certainly does not describe the
particular utility of reducing air volume of a fabric when using
the particular shape of flat yarns as described by the instant
invention.
On this issue, we refer to the examiner’s findings on pages
4-5 of the answer. We add that Yamada discloses that “ . . .
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