Appeal No. 2004-2097
Application No. 09/501,013
While the examiner is correct that appealed claim 1 does
not expressly recite a layer in addition to the specified “core
layer” and “covering layer,” the term “core” would be understood
by one skilled in the relevant art that the claimed sound and
heat insulation material must necessarily include at least a
third layer next to the “core layer” on the surface opposite to
which the “covering layer” is situated. It is by now axiomatic
that every limitation or word in a claim must be considered in
adjudging the propriety of a rejection based on prior art. In
re Geerdes, 491 F.2d 1260, 1262-63, 180 USPQ 789, 791 (CCPA
1974) (“[E]very limitation in the claim must be given effect
rather than considering one in isolation from the others.”); In
re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)
(“All words in a claim must be considered in judging the
patentability of that claim against the prior art.”).
For these reasons, we reverse the examiner’s rejection
under 35 U.S.C. § 102(b) of appealed claims 1 and 3 through 22
as anticipated by Murch.3
3 As we discussed above, Murch teaches that the flexible
protective layer may comprise more than one layer. (Column 8,
lines 43-46.) Thus, the appellant and the examiner may wish to
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007