Appeal No. 2001-0647
Application 08/150,703
This statement represents the total of the Examiner’s analysis of the prior art with
respect to the limitation of the friable nature of the coating compositions. Without
further guidance or insight into the Examiner’s analytical process, we interpret the
Examiner’s position to be all claimed coating compositions comprising the
specified components in the recited amounts are inherently friable to some
unspecified extent.
If this is the Examiner’s position, we find no evidence in Stendel or the
remaining references which supports the proposition that the Stendel coatings are
“friable” to the extent insects can bite and ingest pieces of the coating without
affecting the structural integrity of the coating. If the Examiner’s position is based
upon inherency, we note that:
To establish inherency, the extrinsic evidence “must make clear that the
missing descriptive material is necessarily present in the thing described in
the reference and that it would be so recognized by persons of ordinary skill.”
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d
1749 (Fed. Cir. 1991).
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51, (Fed. Cir. 1999).
Since the specification gives guidance as to the scope of the word “friable,” it was
incumbent upon the Examiner to construe the claims in light of this guidance. The
Examiner has not established that all coating compositions comprising the recited
components in the recited amounts are friable to the extent indicated in Appellants’
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