Appeal 2007-2364
Application 09/879,613
to ensure rapid decomposition of the hydrogen peroxide and thus prevent it
from being a source of impurities." (Br. at 8.)
38. According to Skoufis, Onodera "strongly implies" that the bactericide
should remain effective for a very long time, and hence teaches that
concentrations of 1% to 5% are required to obtain that result. (Br. at 9-10.)
39. Skoufis argues further that Paley supports its interpretation of
Onodera by teaching that, in order to maintain the effectiveness of the
bactericide, it should be isolated from the wipers until just prior to their use.
(Br. at 11–12.)
40. Skoufis argues further that Onodera does not teach the use of
deionized water, nor particulate, metal ion, or anionic counts. (Br. at 12-13.)
41. Skoufis concludes that the claimed invention is counterintuitive and
unobvious (Br. at 12) and that it has "created a new result," namely the rapid
decomposition of hydrogen peroxide, which results in a sponge free of
hydrogen peroxide contaminant and "without the metallic ions which can be
caused by prolonged contact between the hydrogen peroxide and the
sponge." (Br. at 13.)
C. Discussion
Obviousness is a legal conclusion based on findings of fact. In re
Gartside, 203 F.3d 1305, 1316, 53 USPQ2d 1769, 1778 (Fed. Cir. 2000).
During prosecution, the PTO gives claims "their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art." Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75
USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (internal quotation and
9
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: September 9, 2013