Appeal No. 1997-3096
Application 08/391,407
applied references.10
We found above that Nakamura provides clear and unequivocal direction that soft,
porous, flat sheets, which can deflect water and sound and be used for, inter alia, “various
waterproof covers,” can be prepared in desired shapes and dimensions that would reasonably
appear to fall within the vast range of shapes and dimensions encompassed by claim 31 and
would be “generally flat” as required by claim 33, wherein claim 34 directly or ultimately
depends on both of these claims and claim 35 depends on claim 31. We agree with the examiner
that, prima facie, one of ordinary skill in this art would have found in the admitted knowledge of
the prior art set forth in appellants’ specification, the reasonable suggestions that thin, flexible
sheets of flexible material resistant to the infiltration of water, such as the sheet of elastomeric
material of Nakamura, can be flexed, stretched, compressed or otherwise shape-altered to
successfully fit an object such as the inner panel of a vehicle door as desired and remain
“generally flat,” as required by claim 34, and that “adhesive” can be applied at one or more
points, if not completely around, the “periphery” of such sheets as those of Nakamura, in order to
successfully attach the sheets to an object such as the inner panel of a vehicle door, as required by
claim 35. Thus, on this record, the examiner has established that, prima facie, one of ordinary
skill in this art would have been motivated to construct soft, porous, generally flat sheets of
elastomeric material useful as deflectors for water and sound as taught by Nakamura in
acknowledged prior art design, construction and composition, including applying adhesive
thereto, with the reasonable expectation that such sheets of flexible material can be applied to the
inner panel of a vehicle door, thus arriving at the here claimed invention without recourse to
appellants’ specification. See, e.g., Pro-Mold & Tool Co. v. Great lakes Plastics Inc., 75 F.3d
1568, 1573, 37 USPQ 1626, 1629-30 (Fed. Cir. 1996) (“In this case, the reason to combine [the
10 A discussion of the remaining applied references is not necessary to our decision with respect
to this ground of rejection. We note here that while we have reversed the grounds of rejection
under § 102 which are based on the remaining applied references, that fact does not prevent the
application of the same references to the claims under § 103(a) because a reference that does not
anticipate the claimed invention under § 102(b) can still be applied thereto “as evidence of
obviousness under § 103 for all it fairly suggests to one of ordinary skill in the art.” See In re
Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973).
- 16 -
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007