Appeal No. 2004-1184
Application No. 10/074,849
Appellants argue that Nesbitt does not disclose or claim the
specific Shore D hardness of the inner cover layer, nor limit the
cover to materials having a specific Shore D (Brief, sentence
bridging pages 4-5). Appellants are correct that Nesbitt does not
disclose or claim any specific Shore D hardness of the inner cover
layer. However, appellants have not disputed the examiner’s
finding that the exemplified inner cover layer of Nesbitt (SurlynŽ
1605) has a Shore D hardness of 62, which is within the scope of
claim 46 (which recites a Shore D hardness of “at least 60").
Appellants have not contested the examiner’s finding from Yabuki
that SurlynŽ 1605 possesses a Shore D hardness of 62 (see the Brief
and Reply Brief in their entirety). Therefore appellants’ argument
is not persuasive as an example of Nesbitt falls within the scope
of the hardness as generically recited in claim 46 on appeal. See
In re May, 574 F.2d 1082, 1089, 197 USPQ 601, 607 (CCPA 1978).
Appellants argue that Nesbitt does not disclose or claim a
spin factor at all (Brief, page 5). Appellants argue that the
examiner has not met the burden of providing a basis in fact and/or
technical reason to reasonably support the determination that the
allegedly inherent characteristics necessarily flow from the
teachings of the prior art (id.).
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