Appeal No. 2004-0018 Page 4
Application No. 09/220,018
that the cell sizes obtained in the exemplified polystyrene foam bodies would be the same in a
polypropylene foam body. The Examiner simply has not met the burden of showing that
Deblander discloses every limitation of the claimed invention, either explicitly or inherently,
In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997), or that there was
a suggestion within the art of how to obtain the claimed cell sizes in a polypropylene foam sheet
or a motivation for doing so. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed.
Cir. 2002)(Anytime a teaching is modified, there must be a showing of a suggestion or
motivation to make the modification.).
The Examiner does not rely upon Shirai in a manner that cures the deficiencies discussed
above. We conclude that the Examiner has failed to establish either anticipation or a prima facie
case of obviousness with respect to the subject matter of claims 1-4, 6-8, and 13.
CONCLUSION
To summarize, the decision of the Examiner to reject claims 1 and 8 under 35 U.S.C.
§ 102(b); claims 2-4, 6-8, and 13 under either 35 U.S.C. § 102(b) or 35 U.S.C. § 103,
alternatively; and claim 8 under 35 U.S.C. § 103(a) is reversed.
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