Appeal 2006-2160
Application 09/896,439
Appellant argues that Lambdin only teaches using a rayon yarn having
a denier of 2.29, not an aromatic polyamide yarn (Br. 9). Although this
argument is technically correct (see Lambdin, col. 3, ll. 25-35), Appellant
has not addressed the Examiner’s position that the use of any conventional
denier fiber would have been well within the skill of the art (Answer, 4).
See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir.
1990)(Where the difference between the claimed invention and the prior art
is some range or variable, case law has consistently held that applicant must
show that the particular range is critical). Furthermore, Appellant has not
responded to the Examiner’s position that Lambdin is directed to the same
material as the APA (rayon), and thus one substituting the aromatic
polyamide of Binning for the rayon of the APA would have used a similar
size (denier) fiber (Answer 10).3
For the foregoing reasons as well as those reasons stated in the
Answer, we determine that the Examiner has established a prima facie case
of obviousness based on the reference evidence. Based on the totality of the
record, including due consideration of Appellant’s arguments, we determine
that the preponderance of the evidence weighs most heavily in favor of
obviousness within the meaning of § 103(a). Therefore we AFFIRM both
rejections on appeal based on the combination of the APA, Binning and
Lambdin.
3 We note that the Examiner additionally relies on Ogawa (US 4,830,845)
and Ezekiel (US 3,635,675) as evidence establishing the obviousness of the
claimed denier range (Answer 10). Since these references have not been
cited in the statement of the rejection (Answer 3), we will not consider these
references as part of the Examiner’s evidence of obviousness. See In re
Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
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