Ex Parte Beitz et al - Page 13



              Appeal No. 2007-0517                                                                                       
              Application No. 10/768,647                                                                                 
              suggest a particular fluid permeability.  On this record before us, it follows that the                    
              Examiner erred in rejecting claims 1-11 as anticipated over Roslund or obvious                             
              over Roslund in view of the additional cited references.                                                   

                     Claim 12                                                                                            
                     As discussed above, Roslund teaches that the fluid permeability of its                              
              spliced region is maintained to a large degree.  Unlike claim 1, Applicant’s claim                         
              12 merely requires that the splicing region have a fluid permeability at least about                       
              25% as great as the fluid permeability of the absorbent materials being joined.                            
                     Roslund explicitly teaches that its cement strip splicing material maintains to                     
              a large degree the porosity and absorbing capacity of the absorbent materials being                        
              joined.  (Roslund, col. 1, ll. 8-14).  This teaching is a factual basis for finding that a                 
              majority of the fluid permeability is maintained, i.e., something greater than 50 %.                       
              We find that one of ordinary skill in the art reading Roslund would understand that                        
              Roslund forms a splicing region at least about 25 % fluid permeability of the                              
              absorbent materials being joined.                                                                          
                     Under the principles of inherency, if a prior art device in its normal and                          
              usual operation will perform Applicant’s claimed function, then the claim will be                          
              considered anticipated by the prior art device.  In re King, 801 F.2d 1324, 1326,                          
              231 USPQ 136, 138 (Fed. Cir. 1986).  Accordingly, as Roslund teaches that a                                
              majority of the porosity and absorbing capacity is maintained, we find that the                            
              Examiner has presented a prima facie case of anticipation as to Applicant claim 12.                        
                     Applicant contend that Roslund fails to teach, explicitly or inherently a                           
              splicing material having at least about 25% as great a fluid permeability as the                           
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