Appeal No. 2006-1309
Application No. 09/166,625
Garland actually “has a thickness of 0.0005 - 0.002 inches or
0.5 - 2 mils” (page 11 of Answer, first paragraph). In
response, appellant has not refuted the examiner’s calculations
by pointing to any error therein but has simply offered a bald
challenge to the calculations (see page 2 of Reply Brief, second
paragraph). Accordingly, we will accept the examiner’s
calculations as reasonable. Furthermore, it should be quite
clear that a layer of a drop cloth cannot realistically have a
thickness of 0.0005 mils, which is on the order of microns. In
addition, it is well settled that where patentability is
predicated upon a change in a condition of a prior art
composition, such as a change in size, concentration or the
like, the burden is on the applicant to establish with objective
evidence that the change is critical, i.e., it leads to a new,
unexpected result. In re Woodruff, 919 F.2d 1575, 1578,
16 USPQ2d 1934, 1936 (Fed. Cir. 1990); In re Aller, 220 F.2d
454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present case,
appellant has not attached any criticality to the claimed
thickness, and the disclosed preference for the claimed
thickness would seem to allay any suggestion of criticality (see
page 10 of specification, second paragraph).
-5-
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007