Appeal No. 96-1931
Application 07/995,635
It is our view, after consideration of the record before
us, that the disclosure of Sulcs anticipates the invention of
claims 5, 8, 9 and 14 but does not anticipate the invention of
claim 1. We are also of the view that the collective evidence
relied upon and the level of skill in the particular art would
have suggested to one of ordinary skill in the art the obvious-
ness of the invention as set forth in claim 10. However, we
reach the opposite conclusion with respect to the invention as
set forth in claims 2, 4, 6, 7 and 11-13. Accordingly, we
affirm-in-part. We also enter a new rejection of claim 1 using
our authority under 37 CFR ' 1.196(b).
I. The rejection of claims 1, 5, 8,
9 and 14 as anticipated by Sulcs.
Anticipation under 35 U.S.C. ' 102 requires that each
element of the claim in issue be found, either expressly de-
scribed or under principles of inherency, in a single prior art
reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771,
218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026
(1984).
With respect to claim 1, the disclosure by Sulcs of the
term Atransparent coating@ is the key question. The examiner
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