Appeal 2006-2180
Application 10/752,180
We cannot subscribe to Appellants’ position. We find no limitation in
appealed claim 1 which requires that the “burnisher pad” is such that it can
only be used under dry conditions, that is, in the absence of any manner of
wax or polishing liquids. Indeed, we pointed out above that Appellants use
the term “polishing” in disclosing the term “burnishing” in the specification.
Furthermore, we find that one of ordinary skill in this art would not have
found in or inferred from the disclosure of Mendelson4 that polishing roll 23
must be used with liquid waxes or polishes, and in this respect, the Examiner
correctly points out that valve 83 can be used to shut off the flow of liquid
from tank 81. We point out in this respect that Nagayama would have
disclosed that polishing pad 12 can be used on a
floor that has already been scrubbed and coated with wax. Indeed, there is
no limitation in claim 1 or disclosure in the references which states that a
waxed floor cannot be scrubbed in a manner to remove debris and then
polished with a polishing pad at the spinning speed disclosed in Nagayama
specifically enter the document. This document constitutes evidence
submitted after the filing of a notice of appeal which evidence “may be
admitted if the examiner determines that the . . . evidence overcomes all
rejections on appeal and that a showing of good and sufficient reasons why
the . . . evidence is necessary and was not earlier presented has been made.”
37 C.F.R. § 41.33(d)(1) (2005). Since the Examiner has not arrived at the
required determinations, the document cannot be entered by rule.
4 It is well settled that a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in this art would have
reasonably been expected to draw therefrom, see In re Fritch, 972 F.2d
1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir. 1992); In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774
(Fed. Cir. 1985).
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