Appeal 2007-2783
Reexamination 90/005,509
Patent 5,533,499
mentions no “adhesion problem” between the flexible strip and any resilient
member and also mentions no solution achieved by constructing the resilient
member from plastic. Secondly, what we have is only attorney argument
and there is no real evidence, e.g., declaration testimony, establishing that
there indeed is an “adhesion problem” unless the dilator is made of plastic.
Third, the patentee expressly acknowledges that the so called “adhesion
problem” does not exist in Iriarte’s disclosed embodiment, and thus it is not
of relevance in considering whether one with ordinary skill in the art would
know to construct Iriarte’s resilient laminate from plastic. Fourth, even
assuming that an “adhesion problem” exists in the case of Iriarte’s disclosed
embodiment, the patentee has not shown, that the solution provided via
using a plastic construction would not have been known to one with ordinary
skill in the art. Finally, a claimed invention may be obvious for reasons
other than that which led the inventors to the invention, and in this case there
is independent reason for one with ordinary skill to select plastic as the
construction material.
For reasons discussed above, the patentee has not shown that the
Examiner failed to make out a prima facie case of obviousness with respect
to claims 30 and 56.
21
Page: Previous 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Next
Last modified: September 9, 2013