Ex Parte Lee et al - Page 5

                Appeal 2008-0088                                                                              
                Application 10/662,426                                                                        

                Appellants argue that for this claim limitation to be read “on Tateyama, the                  
                burnishing object . . . brush 42, must translate along one of the axes, for                   
                example the Y direction relative to the disk.”  Br. 10-11.  However,                          
                translation along an axis is “linear,” and such a limitation is not in claim 1.               
                      Accordingly, based on our consideration of the totality of the record                   
                before us, we have weighed the evidence of anticipation found in Tateyama                     
                with Appellants’ countervailing evidence of and argument for non-                             
                anticipation and conclude that the claimed invention encompassed by                           
                appealed claims 1, 2 and 4 through 8 would have been anticipated as a                         
                matter of fact under 35 U.S.C. § 102(b).                                                      
                      Turning to the ground of rejection of claim 10 under § 103(a) over                      
                Tateyama, we agree with the Examiner that exchanging wrapped brush 42                         
                and disk brush 202 for a “pad” of the same material would have been an                        
                obvious modification to one of ordinary skill in the art.  Answer 4-5.                        
                Indeed, we find one of ordinary skill in this art would have inferred from                    
                Tateyama Figs. 2 and 9 that the long strip of material forming wrapped                        
                brush 42 and the disk of material forming disk brush 202 are essentially                      
                pads.  Thus, we find in Tateyama convincing evidence supporting the                           
                Examiner’s case that the claimed invention encompassed by claim 10 would                      
                have been prima facie obviousness to this person.  See, e.g., KSR Int’l Co. v.                
                Teleflex, Inc., 127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396 (2007)                         
                quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336-37 (Fed.                          
                Cir. 2006) (“[A]nalysis [of whether the subject matter of a claim would have                  
                been obvious] need not seek out precise teachings directed to the specific                    
                subject matter of the challenged claim, for a court can take account of the                   


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