Appeal 2007-2783
Reexamination 90/005,509
Patent 5,533,499
The patentee in the appeal brief contends that there is a function
performed by narrowing the intermediate segment of the truss, i.e., reducing
the amount of nasal bridge area covered by the truss, which reduces skin
irritation and which simulates the same effect as an adhesive void without
absorbing moisture from the skin. There are several problems with the
assertion. First, the advantage is not identified or discussed in the
specification. In other words, the alleged advantage is a post-filing date
after thought of counsel. Cf. Graham v. John Deere Co., 383 U.S. 1, 24-25
(1966), and Lincoln Engineering Co. of Illinois v. Stewart-Warner Corp.,
303 U.S. 545, 550 (1938) (post-issuance advantages not given much
weight). Secondly, the patentee does not represent that such an advantage
would have been unknown to or unexpected by one with ordinary skill in the
art. Third, the patentee represents (Brief 19:25-27) that that the narrowed
intermediate segment provides the same benefit as use of a pad establishing
an adhesive void and without the need to absorb moisture from skin “is
inherently clear to reader of the patent whether skilled in the art or not.” If
that is the case, then a similar observation would have been taken with
respect to observing the disclosure of Iriarte, i.e., the less the coverage over
the bridge of the nose the less the skin irritation. Fourth, all we have is
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