Appeal 2006-2778
Application 10/780,021
Examiner that selecting a particular swelling layer composition in Asai
would have been obvious to the skilled artisan at the time of the invention.
Regarding claims 39, 46, 48, and 53, Appellants have simply not
rebutted the Examiner’s prima facie case of obviousness for these claims
relying on the collective teachings of Osornio and Asai. At the outset, we
note that Appellants merely point out what the claims recite (Br. 19; Reply
Br. 10).3 Such statements, however, are not considered arguments for
separate patentability of the claims. See 37 C.F.R. § 41.37(c)(1)(vii).
Nevertheless, we conclude that since Asai teaches coating a variety of cable
components, we see no reason why the skilled artisan would not have
applied the water-swellable composition taught by Asai to the particular
cable components of Osornio as claimed, including applying the
composition in the manner recited in claims 39, 46, 48, and 53. Because
Appellants have not persuasively rebutted the Examiner’s prima facie case
of obviousness for claims 39, 46, 48, and 53, the rejection is therefore
sustained.
We also conclude that Asai constitutes analogous art. "Two separate
tests define the scope of analogous prior art: (1) whether the art is from the
same field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
3 In the Reply Brief, Appellants argue for the first time the specific
limitations of claims 54-56 as not disclosed or suggested by Asai (Reply Br.
10). Because Appellants did not raise these specific arguments in the
Appeal Brief, however, they are deemed to be waived. See Optivus Tech.,
Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989, 80 USPQ2d 1839,
1847-48 (Fed. Cir. 2006).
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