Appeal 2006-2045
Application 10/284,357
to infer that the polymerization by both Smith and Spada of identical
monomers, employing the same or similar polymerization techniques, would
produce polymers having the identical composition. Products of identical
chemical composition can not have mutually exclusive properties.”); In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (C.C.P.A. 1977); and In re
Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (C.C.P.A. 1975).
With regard to claim 29 on appeal, Appellants argue that there is a
vast difference between a topical coating of a fire resistant additive to a
fabric as in Goad and a yarn that is inherently fire resistant (Br. 15-16). This
argument is not persuasive. We agree with the Examiner’s claim
construction, namely that a yarn treated or finished with a flame retardant
becomes “inherently” fire resistant (Answer 5-6). See In re Morris, 127
F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997) (“[t]he PTO
applies to the verbiage of the proposed claims the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art,” when read in light of the specification).
Appellants’ Specification does not exclude treated yarns from the term
“inherently” fire resistant (Specification 2, ll. 20-23; 4, ll. 1-3 and 9-11). In
fact, we do not find this term used in the original disclosure.
For the foregoing reasons and those stated in the Answer, we
determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence. Appellants have submitted
two Declarations as rebuttal evidence (the Adams Declaration under
37 C.F.R. § 1.132 and the Barker Declaration). Accordingly, we begin anew
and consider the evidence for and against patentability. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
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