Appeal No. 95-0785
Application 07/748,708
OPINION
A. The Rejection Under § 102(b)
Under 35 U.S.C. § 102(b), every limitation of a claim must
identically be disclosed, either expressly or under the
principles of inherency, in a single prior art reference for it
to anticipate the claim. See In re Bond, 910 F.2d 831, 832, 15
USPQ2d 1566, 1567 (Fed. Cir. 1990).
The thermoformed article recited in claim 16 requires, inter
alia, that the substrate polymer have “an EMI shielding layer on
a portion thereof, said portion being less than the entire
article”. The examiner fails to address this limitation (see the
answer, pages 3 and 5). In the final rejection, the examiner had
addressed this limitation by citing Figures 1 and 2 of Nakanishi
(see the final rejection, the paragraph bridging pages 2 and 3).
However, as pointed out by appellants on page 7 of the brief,
Figures 1 and 2 both show the EMI shield covering all of the
article. There is no disclosure or teaching in Nakanishi
regarding partial covering of the substrate polymer with the EMI
shield.
Furthermore, the article of claim 16 also requires that the
shielding layer was precut from “an add-on EMI shielding sheet”.
The specification defines this term as a sheet with softened
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