Appeal No. 2007-0048 Page 5
Application No. 10/234,608
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. In re Merck, 800 F.2d
1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986); In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981).
Appellant also argues that “Kim does not appear to suggest or require
that the holes be a series of perforations that would be capable of dividing
the material into which they are punched.” (Request for Reconsideration, pp.
2-3.) The argument that the perforations for the claimed web distinguishes
over Kim’s perforations because the claimed perforations are “capable of
dividing the material” is not commensurate in scope with what is claimed.
“Many of appellant’s arguments fail from the outset because, . . . they are
not based on limitations appearing in the claims . . . .” In re Self, 671 F.2d
1344, 1348, 213 USPQ 1, 5 (CCPA 1982). The claim describes the
perforations as “allowing for separation” of the panels from each other. The
claim does not require the perforations to be capable of dividing the material
but only that they “allow” for separation of the panels. In that regard, as we
stated in the Decision on Appeal (p. 11), “[i]n disclosing an insulated door
material provided with punched holes to facilitate cutting the material into
separate panels, Kim is in effect disclosing an insulated web with at least one
perforation (punched hole) allowing for the web to be cut into separate
panels.” (Emphasis added.)
We are not persuaded that we erred in entering a new ground of
rejection of claims 11 and 12 under 35 U.S.C. § 103(a) over Martin in view
of Gray or Kim.
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