Appeal No. 2006-1701
Application No. 10/334,513
in a patent reference be part of the disclosed invention. It is
sufficient that the claimed invention is described in any
respect, including embodiments of the prior art that are not
preferred.
As for the claim recitation regarding reduced air
permeability, it is well settled that when a claimed product
reasonably appears to be substantially the same as a product
disclosed by the prior art, the burden is on the applicant to
prove that the prior art product does not necessarily or
inherently possess characteristics attributed to the claimed
product. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433 (CCPA 1977). In the present case, since the comparative
fabrics of Dugan admittedly are made from a plurality of uncoated
monofilaments having a grooved-shaped cross-section, it is
reasonable to conclude that the fabric has reduced air
permeability compared with the fabric formed of monofilaments
having a circular cross-section. Hence, it is clear that we do
not subscribe to appellants’ argument that “there is nothing in
Dugan to even suggest that the fabric comprised of grooved fibers
would have reduced air permeability as compared to a fabric
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