Appeal No. 1997-3096
Application 08/391,407
and 31 through 33 would have been obvious to one of ordinary skill in this art over one or more
of Nakamura, Adur ‘968, Komatsu ‘651, Komatsu ‘796, Sezaki, Kosaka, Baxmann, Abe, Kawai,
Ito, Adur ‘127 or Komatsu ‘683. In this respect, the examiner should consider, for example,
whether the amount of linear low density polyethylene taught to be combined with the
thermoplastic elastomer taught in Nakamura (see above p. 14) and whether the amount of
inorganic filler which can be optionally added to the thermoplastic elastomer taught in the cited
references (see above pp. 14-15) would have reasonably provided some objective teaching,
suggestion or motivation leading one of ordinary skill in the art to the claimed articles, including
the limitations on the amounts of these ingredients, without recourse to the teachings in
appellants’ disclosure. See generally, In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362,
1365 (Fed. Cir. 1997), citing, inter alia, In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549,
553 (CCPA 1974); Titanium Metals Corp. of America v. Banner, 778 F.2d 775,783, 227 USPQ
773, 779 (Fed. Cir. 1985); In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980);
Wertheim, 541 F.2d at 271, 191 USPQ at 103-04.
The examiner should consider the issue of whether the ground of rejection under § 103
(see above pp. 15-18) should be applied to one or more of claims 16 through 19 and 31 through
33 which encompass the same subject matter as claims 34 and 35 in view of the transitional term
“comprising.” See Exxon Chemical Patents, supra; Baxter, supra.
The examiner should consider the issues of whether one or more of claims 16 through 19
and 31 through 35 constitute double patenting, under 35 U.S.C. § 101 and/or under the judicially
created doctrine of obviousness-type double patenting, with respect to one or more claims of the
‘799 patent and one or more claims of the ‘921 patent (see above note 1). We find that the
claims of these patents are drawn to a “barrier” and a “barrier device” constructed from the
identical or substantially identical material in order to obstruct the passage of water and sound in
the identical or substantially identical manner to the “deflector” encompassed by the appealed
claims, and thus a “barrier” and a “barrier device” specified in the claims of the patents
reasonably appear to be identical or substantially identical to a “deflector” as specified in the
appealed claims. Indeed, it is apparent from such disclosure in the specification as “the barrier
can form a deflector against sound and water” (page 2, last sentence) and the description of
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