Appeal No. 2004-2210 Page 7
Application No. 09/374,117
reference provides evidence that the characteristic is inherently present in the thing taught by the
anticipatory reference. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d
1746, 1749 (Fed. Cir. 1991)(“To serve as an anticipation when the reference is silent about the
asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic
evidence.”). But, in every case, the additional reference must be mentioned in the statement of
the rejection to give the applicant appropriate notice of the examiner’s reliance upon it.
In response to Appellant’s argument that McCormack teaches anti-block compounds
containing a filler such as diatomaceous earth, we note that only Examples 1 and 2 contain such
a disclosure. Examples 3-5 describe the inclusion of 20 percent Techmer S110128E62 antiblock,
but there is no evidence of record indicating that this antiblock contains filler.
Turning, for illustration purposes only, to Example 3 of McCormack, we note that
described therein is a three layer breathable film with a core layer sandwiched between two skin
layers such that the film has the C:D:C structure of the claims. The core layer contains 63%
ECC English China Supercoat™ calcium carbonate in a blend of polyolefins. According to
Example 1, this filler has an average particle size of 1 micron, a size within the requirements of
the claims. The skin layers contain EVA, i.e, ethyl vinyl alcohol polymer, a polymer which
Appellant exemplifies in their specification as being a hydrophilic polymer resin capable of
absorbing and desorbing moisture (specification, p. 14, ll. 25-29). The three layer film is
extruded and later stretched 4x, i.e., to 4 times its length, thus indicating that the core layer is
microporous. The film had a water vapor transmission rate of 1301 g/m2/24hr, thus indicating
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