Appeal No. 2001-2132 6
Application No. 08/985,443
that the Shigemoto reference of record is satisfies the requirement of 10 to 100 Gurley of
the claimed subject matter.
As to the terms, “die-cuttable and matrix strippable” inasmuch as Shigemoto teaches
the requisite structure based upon the same core layer and a skin layer, it would be
expected that the multilayer film of Shigemoto would share the same physical
characteristics as that of the claimed subject matter. As stated above, it is well settled that
the mere recitation of a newly discovered function or property inherently possessed by
compositions known in the prior art, does not cause a claim drawn to these compositions
to distinguish over the prior art. Rather, the burden of proof shifts to the appellant to
prove that the subject matter shown to be in the prior art does not necessarily possess the
characteristic, i.e., “die-cuttable and matrix-strippable” of the claimed product. In re Best,
562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977); In re Skoner 517
F.2d 947, 950-51, 186 USPQ 80, 82-83 (CCPA 1975).
Finally we affirm the rejection both on the grounds of anticipation and obviousness
inasmuch as Shigemoto of record discloses particular values anticipatory of the claimed
subject matter for the density of the polyethylene and the thickness of each of the core
layer and matrix layer. Our determination of anticipation is based on the unique merits of
each case. In the instant case, we conclude that the teachings of Shigemoto anticipate
values within the range required by the claimed invention. Hence, Shigemoto anticipates
the claimed subject matter.
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