Appeal No. 2000-1582
Application 08/697,034
construction, we find no express disclosure in the reference
of a mechanical finish on the exterior surface of the outer
sheet 11, which is elastic and molded from rubber or synthetic
resin (translation, page 4, line 3). Hagiwara may however
still anticipate claim 1 if such mechanical finish would
nonetheless be inherent therein. Atlas Powder Co. v. IRECO
Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1946-47 (Fed. Cir.
1999).
In the examiner’s answer (but not in the final
rejection), the examiner finds inherency per the statement at
page 6 that (emphasis added):
Although the Hagiwara reference does not
specifically recite that the bumper has a “mechanical
finish”, it is inherent to the construction of the bumper
and clearly desirable that the outside surface of the
bumper be aesthetically appealing and thus include some
type of sanding, which is a “mechanical finish”, to
either prepare the bumper for painting or to simply
provide the bumper with a smooth appearance.
We do not agree with this finding. Under the principles of
inherency, a reference does not anticipate unless it
necessarily includes the limitation alleged to be inherent.
Atlas Powder Co., supra. Here, although the examiner
theorizes that the exterior surface of the outer sheet 11 of
6
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