Appeal 2006-2714 Application 10/228,898 Examiner in support of any proposed modification to Sims to meet the claim language. To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). The Examiner’s use of the secondary references as extrinsic evidence that steel wool is inherently capable of use in sanding and would be so recognized by persons of ordinary skill in the art is thus appropriate in the rejection of claims 5-9 as anticipated by Sims. Moreover, we find that the secondary references cited by the Examiner do evidence that steel wool is recognized by persons of ordinary skill in the sanding art for use as a sanding surface for sanding many different types of surfaces (Deware, col. 1, ll. 16-17, col. 2, ll. 63-67; Evensen, col. 1, ll. 18-19, col. 6, ll. 11-19; Carter, col. 1, ll. 16-17). We therefore conclude that Sims’ V-shaped steel wool pad 88 meets the “sanding pad” limitation of claim 5 and that Sims’ cleaning, polishing, and waxing device, which is capable of sanding drywall surfaces by virtue of the abrasive steel wool pad, is a “drywall sanding device” as recited in the preamble of claim 5. We appreciate that Sims does not expressly disclose use of the device for sanding, but claim 5 is directed to a device, not a method of using the device. The recitation of an intended use for an old product does not make a 7Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
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