Appeal No. 1997-3887
Application 08/449,204
solution or dispersion grade rubber and a plasticizer, see Exxon Chemical Patents Inc. v. Lubrizol
Corp., 64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir. 1995) (“The claimed composition is
defined as comprising - meaning containing at least - five specific ingredients.”), and is adhered to one
surface of a “crack resistant” film, wherein the term “crack resistant” is defined in the specification (page
3, lines 12-14). See generally, In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027
(Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
With respect to the two grounds of rejection of appealed claims 6 and 9 under 35 U.S.C. §
102(b) over Akiyama et al. (Akiyama) and over Namiki et al. (Namiki) (answer, pages 4-5 and 8-9),
the examiner has the burden of making out a prima facie case of anticipation in the first instance by
pointing out where each and every element of the claimed invention, arranged as required by the claims,
are found in each of the references, either expressly or under the principles of inherency. See generally,
In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986); Lindemann
Maschinenfabrik GMBH v. American Hoist and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481,
485 (Fed. Cir. 1984). This the examiner has not done. We fail to find in Akiyama the disclosure of a
“crack resistant” film as this term is used in the appealed claims and the examiner has not explained how
the teaching of “a plastic film” (col. 4, line 62) would inherently disclose the specified film. Thus, the
examiner has failed to make out a prima facie case of anticipation on this basis alone.
We further fail to find in this reference a “blend” comprising at least the four ingredients as
specified in claim 6 and indeed, it is not clear from this disclosure that Akiyama even discloses an
example of each of the ingredients (e.g., col. 1, line 55, to col. 2, line 23; col. 2, line 64, to col. 3, line
59; Akiyama claim 1). For example, the examiner has not explained why a copolymer of vinyl and
acrylate monomers satisfies the requirement for “an acrylic resin” and “a vinyl resin,” and why the
copolymer of Akiyama Example 17, which contains a preponderance of styrene, constitutes a
“dispersion grade rubber.” Even if each of the elements of the “blend” as claimed could be generated
from the disclosure of the reference, we find that one of ordinary skill in this art would have to make
judicious selections in type and amount of the large number of listed monomers to form such copolymers
and added other components with no disclosed template to follow in order to arrive at the combination
of ingredients comprising the claimed “blend.” Indeed, “plasticizers” are listed as one of a large number
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