Appeal 2007-2771
Application 10/418,661
In re Anderson, 471 F.2d 1237, 1242, 176 USPQ 331, 336 (CCPA 1973); Ex
parte Parks, 30 USPQ2d 1234 (BPAI 1993); Ex parte Grasselli, 231 USPQ
393 (BPAI 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984).
Here, we determine that the Examiner has not demonstrated that the
negative limitations “the mat is non-perforated” and “deck does not contact
the single ply membrane” recited in claims 3, and 5 through 22 and/or 26
introduce a new concept not provided in the application disclosure, as
originally filed, in violation of the first paragraph of 35 U.S.C. § 112. In this
regard, we note that the application disclosure, including the drawings, as
originally filed, reasonably convey to one of ordinary skill in the art that the
inventors of the present invention had possession of rolling out a non-
perforated flexible mat in the claimed method prior to cutting (perforating)
and fitting it around roof penetrations at the time of the invention (See
Figure 4, together with Specification 5, 9, and 10). We also share the
Appellants’ view at page 10 of the Brief that:
Page 2 of the [S]pecification expressly teaches that the
conventional board stock insulation separates the single-ply
membrane from the roof deck. Page 5 of the [S]pecification
teaches that the underlayment mat replaces the conventional
board stock insulation. If the underlayment mat replaces the
conventional board stock insulation, then the underlayment mat
must separate the single-ply membrane from the roof deck.
Accordingly, we are constrained to agree with the Appellants that the subject
matter recited in claims 3, and 5 through 22 and 26 does not contain a
concept not reasonably conveyed in the application, as originally filed, in
violation of the first paragraph of 35 U.S.C. § 112.
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