Appeal 2006-1207
Application 10/354,491
Concerning the affirmed § 102 rejection of claims 14, 15, 17, 18, 21,
and 22, the Appellant reasserts his argument that Wilhelm's coating 3 with
fibers 4 embedded therein does not satisfy the composite reinforcement
limitation of the independent claims. In this regard, Appellant contends that
the claim phrase "composite reinforcement" should be interpreted as a
combination of materials that performs a reinforcement function (Request
3). According to the Appellant, Wilhelm's coating with fibers does not
provide any sort of reinforcement (Request 4).
However, as pointed out on page 6 of our decision, the fibers pressed
into Wilhelm's coating are expressly disclosed as being reinforcement fibers
(Translation 10). It is reasonable, therefore, to consider Wilhelm's
composite or combination of coating and fiber materials to be a composite
reinforcement, that is, a composite which performs a reinforcement function.
Otherwise, the fibers 4 pressed into coating 3 would not have been expressly
described by Wilhelm as reinforcement fibers (id.). See Ex parte Levy,
17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990). Under these
circumstances, it is appropriate to shift to the Appellant the burden of
proving his opposing belief. See In re Scheiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). On the record of this appeal,
the Appellant has provided no such proof.
Concerning the § 103 rejection based on Wilhelm in view of
Dempster, the Appellant reasserts his argument that Dempster would not
have suggested providing Wilhelm's method with the priming step recited in
claims 16 and 20. However, for the reasons fully detailed on pages 17 and
18 of our decision, we continue to believe that these references establish a
prima facie case of obviousness with respect to this priming step. As for
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Last modified: September 9, 2013