Appeal No. 2000-0996
Application 08/836,940
teachings of the applied references which support the examiner’s position. 4 On this record, we
are of the opinion that the differences in the arrangement of the panel and backing web and the
construction of the female mold between Tornero and the layers and molds of Kohama and
Knaus clearly indicates that the modification of these aspects of the vacuum molding process of
Tornero as proposed by the examiner would indeed render the vacuum molding process of
Tornero incapable of operating in the manner taught in that reference See Fritch, supra; In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Therefore, we must conclude that the examiner has failed to make out a prima facie case
of obviousness with respect to all of the grounds of rejection on appeal,5 and accordingly, we
reverse.
Other Issues
We recommend that upon further prosecution of the appealed claims after disposition of
this appeal, the examiner conduct a further search for the claimed invention in Class 264. A
cursory electronic search of that art area resulted in the United States Patent to Conner and the
Japanese Patents to Honda and to Yoshida et al. (Yoshida).6
We decline to exercise our authority under 37 CFR § 1.196(b) (2003) and enter on the
record a new ground of rejection of at least appealed claim 21 under 35 U.S.C. § 102(b) and/or
§ 103(a) over any of Kohama, Conner, Honda and Yoshida, leaving it to the examiner to make
factual findings from the teachings of these references and consider whether these references or
any other prior art applies under either or both statutory provisions.
The examiner’s decision is reversed.
4 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d at 1264-65, 23 USPQ2d at 1782-83; In re Preda, 401 F.2d
825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on the part of this person. In re
Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
5 A discussion of Andrews, Todd and Thevenet is not necessary for our decision.
6 A copy of these references and a PTO Form 892 listing the same are appended to this decision.
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