Appeal 2007-1365
Reexamination Control 90/006,595
Patent 6,289,548
that its claimed materials, e.g., polyurethane sponges, or the use of a
grinding wheel to remove material2 were unknown to one of ordinary skill in
the art or provided unexpected benefits. Further, we can assume that
Patentee may be correct in stating that the depth of the torn edge is not
recited in the Australian application. The Australian application however,
instructs one of ordinary skill in the art to remove sufficient material such
that the desired pattern is created. Patentee’s arguments have been
considered but they do not sufficiently rebut the findings of fact made by the
Examiner. Patentee has done no more than follow the teachings of the prior
art and combine known elements to yield predictable results. Specifically,
one of ordinary skill in the art would have used artificial sponges on rollers
with portions of the sponge face removed in place of natural sea sponges as
the use of the artificial sponges results in reduced labor and material costs as
compared to natural sea sponges. Cf., KSR at 1739, 82 USPQ2d at 1395.
We conclude that Patentee has failed to demonstrate that the Examiner erred
in rejecting claims 1, 5-8 and 12-14 as obvious over the Australian
application.
2 Patentee’s recitation of a grinding wheel to produce the claimed sponge is a
product-by-process claim as the product is defined at least in part in terms of
the method or process by which it is made. Bonito Boats, Inc. v. Thunder
Craft Boats, Inc., 489 U.S. 141, 158 n., 9 USPQ2d 1847, 1855, n. (1989). In
construing such a claim, the Federal Circuit has held that “[i]f the product in
a product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process.” In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964,
966 (Fed. Cir. 1985).
14
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: September 9, 2013