Appeal No. 2006-1587
Application No. 10/020,768
used polyethylene terephthalate fibers with a diameter of “about
12 microns,” for example 12.1 microns, based on a reasonable
expectation that the resulting mat would have the same
successful properties as Heidweiller’s mat containing
polyethylene terephthalate fibers with a diameter of 12.4
microns. Id. See also In re O'Farrell, 853 F.2d at 904, 7
USPQ2d at 1681.
We note that Appellant argues that “the present invention
differs from the cited prior art to Heidweiller in two respects”
(Brief, page 8) and that “the two distinctions considered
together, establish patentability beyond a reasonable doubt”
(Brief, page 10). That is, Appellant argues that “the
Heidweiller patent teaches away from the present invention in
two respects” (id.). “A reference may be said to teach away
when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the
Comment [s7]: Fed site not
path that was taken by the applicant.” In re Kahn, 441 F.3d published as of yet.
977, 990, 78 USPQ2d 1329, 1338 (CAFC 2006) (citing In re Gurley,
27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994)). We
find nothing in Heidweiller that discourages a person having
ordinary skill in the art from using a glass fiber content of
less than 50% by weight or a diameter for the polyethylene
terephthalate of about 12 microns (or less). Therefore, we
cannot agree with Appellant that Heidweiller teaches away.
Moreover, contrary to Appellant’s belief, the presence of two
claim distinctions does not “establish patentability beyond a
reasonable doubt” (Brief, page 10). See Titanium Metals Corp.,
-8-
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