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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