Appeal 2007-1525
Application 10/664,628
fibers in his polymer matrix can be mixed together in a suitable manner
whereby a suitable distribution of different fibers is produced (Hagfors, col.
2, ll. 41-45; col. 4, claim 3). In light of this teaching, it is reasonable to
believe that Hagfors’ fiber angles are randomly distributed which Appellant
concedes would yield a range of exposed fiber lengths overlapping the claim
1 range (Reply Br. 2).
For the above stated reasons, there is ample basis in fact which
reasonably supports the Examiner’s determination that the average length of
protruding fibers between 0.01 and 3 mm as required by claim 1 necessarily
flows from the teachings of Hagfors. See Ex parte Levy, 17 USPQ2d 1461,
1463-64 (BPAI 1990). This basis in fact includes: (1) the fact that the claim
1 range and Hagfors’ desired range of roughness values are both produced
from corresponding materials (i.e., fiber-containing polymer) and techniques
(i.e., grinding of the polymer surface to thereby expose the fibers contained
therein); and (2) the fact that Hagfors’ col. 2 teaching of mixing fibers would
yield a random distribution which Appellant concedes would produce a
range of fiber lengths which overlaps the claim 1 range (Reply Br. 2).
Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the Patent and Trademark Office can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product. Whether the rejection is based on
“inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under
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