Appeal No. 1997-3096
Application 08/391,407
of use limitation of the claimed article (see above pp. 6-7). Thus, we cannot agree with
appellants that the vast range of the shapes and dimensions of the claimed “sheet” of elastomeric
material that can function as a “deflector” for water and sound as claimed distinguish the “sheet”
of elastomeric material shown in Nakamura.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of anticipation found in Nakamura with appellants’ countervailing
evidence of and argument for no anticipation in fact and find that the claimed invention
encompassed by appealed claims 16 through 19, 31 and 33 are anticipated as a matter of fact
under 35 U.S.C. § 102(b).
We cannot, however, arrive at the same finding with respect to the application of
Nakamura to appealed claim 32 under § 102(b). We found above that the amount of linear low
density polyethylene blended with the thermoplastic elastomer is 37.5% and 40% by weight in
Nakamura Examples 11-14 and that Nakamura teaches that, if present, the thermoplastic
synthetic resin can be mixed in an amount of up to 50% by weight (see above p. 12). Thus, we
find that the embodiments of these Nakamura Examples fall outside of the claimed limitations of
“from about 2% to about 20%” linear low density polyethylene specified in claim 32, and the
generic disclosure in the reference with respect to such subject matter does not clearly and
unequivocally direct those skilled in the art to the claim limitations without the need for judicious
selection. Accordingly, we are of the opinion that Nakamura does not prima facie describe the
claimed invention encompassed by claim 32 within the meaning of § 102(b). See Arkley, supra;
cf. In re Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982) (“[T]he fact remains
that one of ordinary skill informed by the teachings of [the reference] would not have had to
choose judiciously from a genus of possible combinations of resin and salt to obtain the very
subject matter to which appellant’s composition per se claims are directed.”). Accordingly, we
reverse this ground of rejection.
We turn next to the grounds of rejection based on any of Adur ‘968, Komatsu ‘651,
Komatsu ‘796, Sezaki, Kosaka, Baxmann, Abe, Kawai, Ito, Adur ‘127 or Komatsu ‘683 as
applied by the examiner to combinations of claims 16 through 19 and 31 through 33 under
§ 102(b) or § 102(e) (see above p. 4). The examiner has not carried his burden of making out a
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