Appeal 2007-1898
Application 10/360,622
Appellants contend that Brandolini discloses that his foam plank
laminate is impermeable, and thus there is no reason for choosing rubber as
a material to be used in Brandolini (Br. 9-10).
The Examiner contends that Tye discloses the same material as
claimed with a plurality of holes formed in the compressing direction, and
claim 1 on appeal is not specific about any hole diameter (Answer 3 and 8).
The Examiner contends that there is reasonable evidence that the foam
structure of Tye is the same or substantially the same as the claimed foam
structure (Answer 3-4 and 8-9).
The Examiner contends that “inherency” can be applied in a § 103(a)
rejection (Answer 9-10).
The Examiner contends that Brandolini teaches that the foam plank
laminate is impermeable, but notes that the rejection relies on the
intermediate foam layer which is completely perforated and permeable
(Answer 5 and 10-11).
Accordingly, the issues presented on the record in this appeal are as
follows: (1) is there reasonable evidence that the foam structure of Tye will
have the same or substantially the same properties or functions as the
claimed foam structure?; (2) can an “inherency” theory be applied in a
§ 103(a) rejection?; and (3) does Brandolini disclose a permeable foam
structure intermediate layer that reasonably appears to be the same or
substantially the same as the claimed foam structure?
We determine that the Examiner has established a prima facie case of
anticipation/obviousness in view of the reference evidence, which prima
facie case has not been adequately rebutted by Appellants’ arguments.
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013