Appeal No. 1997-3096
Application 08/391,407
prima facie case of anticipation by identifying wherein each and every limitation of the claimed
invention, arranged as required in these claims, is described in each of these applied references,
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, without the need for judicious selection.
See King, supra; Lindemann Maschinenfabrik, supra. Indeed, unlike the disclosure of
Nakamura, it is not readily apparent that the cited portion of each of the references considered
here to which the examiner invites us to “Refer to,” contains a description of each and every
limitation of the claimed invention, arranged as required in claims. Thus, an explanation of how
each of the references describes the claimed invention within the meaning of § 102 is required to
make out a prima facie case of anticipation. We note that one of the elements of the claims to
which the references do not clearly and unequivocally direct those skilled in the art, is the
required presence of an inorganic filler in the specified amounts, and in the absence of an
explanation, it would reasonably appear that judicious selection within the teachings of the
references is required to arrive at this claim limitation.9 Accordingly, in the absence of such
explanations, we are constrained to reverse all of these grounds of rejection under § 102.
Finally, we reach the ground of rejection of claims 34 and 35, as we have interpreted
these claims above, under § 103(a) wherein the examiner has applied each of the references as
discussed in all of the grounds of rejection under § 102 in view of the knowledge in the prior art
as discussed at page one, second paragraph, of appellants’ specification (see above p. 4), which
reads as follows:
It was known that surface protectors or deflectors are particularly suited for shielding
the inner panels of vehicles against infiltration of water or dust. In general, the
deflectors comprise a thin, flexible sheet of a plastic material having a peripheral
shape to overlie a predetermined portion of the inner door sheet metal. Typically, the
deflectors are joined to the door sheet metal by pressure sensitive adhesive applied in a
band around the peripheral edge of the deflectors.
We will consider this ground of rejection with respect to Nakamura as representative of the
9 The matter of the optional presence of inorganic filler in the articles of the references was
raised in the preliminary amendment of November 30, 1993 in the ‘375 application (Paper No.
16; page 2).
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