Appeal No. 2003-0091
Application No. 09/298,640
385, 388 (Fed. Cir. 1984). In other words, there must be no
difference between the claimed invention and the reference
disclosure, as viewed by a person of ordinary skill in the field
of the invention. Scripps Clinic & Research Found. v. Genentech
Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
Independent claim 22 has a “consisting essentially of”
transition phrase which excludes elements that would materially
affect the basic and novel characteristics of the claimed
invention. See AFG Industries Inc. v. Cardinal IG Co., 239 F.3d
1239, 1245, 57 USPQ2d 1776, 1780-81 (Fed. Cir. 2001). In
applying Grolig against claim 22 (see pages 5, 10 and 11 in the
answer), the examiner reads the “exterior glass sheet” and
“interior transparent sheet” limitations on Grolig’s glass panes
6 and 7, and the penetration resistant sheet limitations on the
combination of Grolig’s plastic sheet layer 3 and
polyvinylbutyral sheets 4 and 5. As persuasively argued by the
appellant (see pages 6, 9 and 10 in the main brief and page 2 in
the reply brief), this analysis is unsound. Based on Grolig’s
description thereof, a person of ordinary skill in the art would
have understood the laminated safety glass shown in Figure 1 as
embodying five “sheets” of the sort set forth in claim 22: glass
pane 6, glass pane 7, polyvinylbutyral sheet 4, polyvinylbutyral
7
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