Appeal 2006-1207
Application 10/354,491
The Examiner contends “the joint tapes of Wilhelm are fibrous layers
that are wrapped in the circumferential or hoop direction of the pipe
assembly. The placement of such a fibrous reinforcement structure in the
hoop direction necessarily results in some degree of hoop reinforcement”
(Answer 8). The Examiner further contends:
[T]he claim simply requires a tape ”to provide
hoop reinforcement”. It is emphasized that the
tape of Wilhelm is a fiber/resin composite that is
wrapped over the weld region (equates to
circumferential or hoop direction)- even if all the
fibers are perpendicular to the hoop direction,
some degree of hoop reinforcement would still be
provided due to the thickness of the respective
fibers [Answer para. bridging 8 and 9].
Appellant repeats the arguments in the Reply Brief. (Reply Br. 3-4).
Our reviewing courts have held that, if a prior art device inherently
possesses the capability of functioning in the manner claimed, anticipation
exists regardless of whether there was recognition that it could be used to
perform the claimed function. In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). When relying upon the theory
of inherency, the Examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.
See Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990).
Appellant attempts to refute the Examiner’s position by arguing that
“if hoop reinforcement were necessarily provided, Wilhelm would at the
very least need to teach circumferential fiber orientation” (Br. 9). We note
that the Examiner provides a technical reasoning of why the composite joint
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