Appeal No. 1997-3096
Application 08/391,407
of elastomeric material “further comprising a layer of adhesive selectively applied about the
periphery of the sheet for adhering the sheet to the inner panel of a vehicle door” (see above note
7);8 find claim 35 to be directed to the intended use of the “sheet” which is given weight but does
not limit the claimed article to such “application” (see above pp. 6-7); and interpret the language
“sheet” of material having “a peripheral shape generally matching the peripheral configuration of
the inner panel,” which language is found in claim 31, to include within its scope such a vast
range of shapes and dimensions as to be almost limitless for all practical intents and purposes.
Thus, we interpret claim 35 to encompass a sheet of elastomeric material which can function as a
“deflector” for water and sound, that has “adhesive” at one or more points, if not completely
around, its “periphery.”
It is well settled that the examiner has the burden of making out a prima facie case of
anticipation under § 102(b) and § 102(e) in the first instance by pointing out where each and
every element of the claimed invention, arranged as required by the claim, is described
identically in a single reference, either expressly or under the principles of inherency, in a manner
sufficient to have placed a person of ordinary skill in the art in possession thereof. See generally,
In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); In re King, 801 F.2d
1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986); Lindemann Maschinenfabrik GMBH v.
American Hoist and Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). It
is also well settled that if a reference does not disclose a specific embodiment which satisfies all
of the claim limitations, the reference will nonetheless describe the claimed invention within the
meaning of § 102(e) if it “clearly and unequivocally . . . [directs] those skilled in the art to [the
claimed invention] without any need for picking, choosing, and combining various disclosures
not directly related to each other by the teachings of the cited reference.” In re Arkley, 455 F.2d
586, 587, 172 USPQ 524, 526 (CCPA 1972).
We find that Nakamura discloses soft, porous, flat sheets comprising at least
thermoplastic elastomers with 40 to 80 % by weight of inorganic filler which is disclosed to be
resistant to, and thus a “deflector” for, water such that the sheets of elastomeric material can be
8 We leave the matter of whether claims 34 and 35 comply with § 112, second paragraph, to be
addressed by the examiner upon any further consideration of these claims subsequent to this
- 11 -
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007