Appeal No. 2006-1562
Application No. 10/720,948
reasoning in support of her inherency position, we determine
that the Examiner has failed to meet her burden of showing that
the here claimed “thickness” feature necessarily and inherently
flows from the teachings in the Maged or Micchia patents.
Rather, the Examiner is improperly dealing in “probabilities”
and “possibilities” regarding the claimed thickness.
The Examiner is correct that both the Maged and Micchia
patents show in their drawings that the article and device
thereof have a thickness. (Answer, page 7). However, because
the drawings are not indicated as being drawn to scale, we
cannot conclude from the drawings what the respective
thicknesses actually are. Drawings may only be used to show
actual dimensions when the patent indicates that the drawings
contained therein are drawn to scale. Hockerson-Halberstadt,
Inc. v. Avia Group International, Inc., 222 F.3d 951, 956,
55 USPQ2d 1487, 1491 (Fed. Cir. 2000), Manual of Patent
Examining Procedure (MPEP) § 2125 (Rev. 3, August 2005). At
best, the patents are ambiguous as to whether Appellant’s
sufficient “thickness” limitation is taught. An anticipation
rejection cannot be predicated on an ambiguous reference. In re
Turlay, 304 F.2d 893, 899, 134 USPQ 355, 360 (C.C.P.A. 1962).
Moreover, the Examiner is engaging in mere conjecture in stating
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007