Appeal No. 2003-1021
Application 09/507,507
rejection is proper since the original specification stated that
each layer has “a higher thermal conductivity than the one
underneath it” which is inconsistent with the claim 24
requirement that each of the plurality of discrete layers “has a
coefficient of thermal expansion greater than the layer beneath
it.” Examiner’s Answer, Paper No. 23, mailed December 17, 2002,
pages 6-7.
We are in agreement with appellants that it is clear
from the specification and claims that each of the layers may
have both a higher coefficient of thermal expansion and a higher
thermal conductivity relative to the layers beneath it. See
Appeal Brief, page 17. Thus, we are in agreement with appellants
that the examiner’s rejection of claim 4 is improper.
Accordingly, this ground of rejection is reversed.
2. Rejection of claims 1, 9, 13 and 16-22 under
35 U.S.C. § 102(b) as anticipated by Gondusky
A prior art reference anticipates a claim when the
reference discloses every feature of the claimed invention either
explicitly or inherently. See Hazani v. United States ITC, 126
F.3d 1473, 1477, 45 USPQ2d 1358, 1361 (Fed. Cir. 1997).
“Inherent anticipation requires that the missing descriptive
material is ‘necessarily present,’ not merely probably or
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