Appeal No. 1997-3096
Application 08/391,407
provides clear and unequivocal direction that flat sheets can be prepared in desired shapes and
dimensions that would reasonably appear to fall within the vast range of shapes and dimensions
encompassed by the claims.
Therefore, we find as a matter of fact that, prima facie, Nakamura reasonably appears to
describe all of the elements of the invention encompassed by claims 16 and 31 in a manner
sufficient to have placed a person of ordinary skill in the art in possession thereof, and thus
reasonably appears to describe the claimed invention within the meaning of § 102(b). Spada,
supra. Accordingly, because the sheet materials disclosed by Nakamura reasonable appear to be
identical to the sheet materials of claims 16 and 31, the burden falls upon appellants to establish
by effective argument and/or objective evidence that the claimed invention patentably
distinguishes over this reference. See Spada, 911 F.2d at 708-09, 15 USPQ2d at 1657-58; In re
Best, 562 F.2d 1252, 1254-56, 195 USPQ 430, 432-34 (CCPA 1977).
In view of the prima facie case of anticipation made out over Nakamura, we have again
evaluated all of the evidence of anticipation and non-anticipation based on the record as a whole,
giving due consideration to the weight of appellants’ arguments in the brief. Spada, F.2d at 708,
15 USPQ2d at 1657. Appellants submit, with respect to all of the applied references, that “none .
. . [apply] to vehicle use for deflectors, nor suggest their use as sound deadening barriers for
vehicular uses as claimed by Appellants” and that “[t]here is a positive edge feature recited,
namely, that it be matched to the panel or an opening in the panel” that are “not taught or
suggested” by the references (brief, pages 6-7; emphasis supplied; see also reply brief, pages 1-
2). Appellants present no argument specific to Nakamura. The examiner responds that the
intended purpose for the claimed “deflector” does not “differentiate the claimed product from the
prior art product satisfying the claimed structural limitation,” and that “there is no positive
structural limitation which distinguishes from the prior art” as “[a]n inner door panel can have
any desired shape and/or size” (answer, pages 6-7; see also supplemental answer, page 1).
Upon reconsideration of the issue in view of appellants’ arguments and the examiner’s
response thereto, we agree with the examiner because we remain of the view expressed above
that while the claim language must be given weight to give meaning to the claim terms even
though it is a statement of intended use, such language does not function as a method or process
- 13 -
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: November 3, 2007