Appeal No. 2006-1586
Application No. 09/933,360
mention a granulating step is a teaching that one is not
required. The limited scope of the Schnell article cited by
appellants falls far short of such an interpretation.
We note that appellants do not set forth a separate
substantive argument against the § 103 rejection of claim 2,
but simply submit that Regel does not alleviate the asserted
deficiency of Woldenberg.
One final point remains. In the event of further
prosecution of the subject matter at bar, the examiner should
consider a rejection under § 103 over the admitted prior art.
Assuming, for the sake of argument, that all known processes for
making molded polycarbonate include a granulation step, it is
incumbent upon appellants to demonstrate that they have not
eliminated a conventional step along with its attendant
advantage. It is well settled that the omission of a feature
disclosed by the prior art along with its disclosed
advantage/function is a matter of obviousness for one of
ordinary skill in the art. In re Thompson, 545 F.2d 1290, 1294,
192 USPQ 275, 277 (CCPA 1976); In re Kuhle, 526 F.2d 553, 555,
188 USPQ 7, 9 (CCPA 1975); In re Marzocchi, 456 F.2d 790, 793,
173 USPQ 228, 229-30 (CCPA 1972); In re Larson, 340 F.2d 965,
969, 144 USPQ 347, 350 (CCPA 1965); In re Kegan, 331 F.2d 315,
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