Appeal No. 2003-0280 Page 4
Application No. 09/382,120
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
Claims 1-3, 8 and 9
In the rejection of claims 1-3, 8 and 9 (final rejection, pp. 2-3), the examiner first
set forth the pertinent teachings of Montecalvo. Next, the examiner stated the position
that any relatively hydrophobic material possesses the functional characteristics set
forth in the claims. The examiner then set forth the pertinent teachings of Anderson
and Meathrel.1
In the rejection of claims 1-3, 8 and 9, the examiner did not ascertain the
differences between the prior art and the claims at issue2 and did not determine that it
would have been obvious at the time the invention was made to a person of ordinary
skill in the art to have modified Montecalvo in any respect. Thus, for the rejection of
claims 1-3, 8 and 9 under 35 U.S.C. § 103 to be proper, claims 1-3, 8 and 9 must be
anticipated by Montecalvo since it is well settled that a disclosure that anticipates under
1 The references to Anderson and Meathrel were cited and applied by the examiner for only one
reason, to factually support the conclusion that the pressure sensitive adhesive coating 26 of Montecalvo
is in fact a relatively hydrophobic material and accordingly, inherently possesses the functional
characteristics set forth in the claims.
2 After the scope and content of the prior art are determined, the differences between the prior art
and the claims at issue are to be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966).
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