Appeal No. 2004-2299
Application No. 09/244,006
disclose or suggest the use of three-dimensional character faces
mounted on the surface of the article (Brief, pages 5-6; Reply
Brief, page 3). The examiner has failed to establish that a
“three-dimensional character face” as required by the claims on
appeal is disclosed or described by Goodman. Therefore the
examiner has failed to establish that each and every limitation of
the claims on appeal is described by Goodman within the meaning of
section 102(b). The examiner has stated his “position” that the
three-dimensional applique of Goodman “can comprise any design”
(Answer, page 9). As correctly argued by appellant (Reply Brief,
page 3), the examiner merely states his opinion with no support.
Moreover, it is fatal to the examiner’s anticipation finding that
Goodman unquestionably fails to disclose, expressly or under the
principles of inherency, the appellant’s claimed design, namely, a
“three-dimensional character face.” See In re King, 801 F.2d at
1326, 231 USPQ at 138. For the foregoing reasons, we cannot
sustain any of the rejections based on section 102(b) over Goodman.
C. The Rejections under § 103(a)
The examiner finds that Goodman discloses articles such as
hairbrushes, hand mirrors, and jewelry having surfaces for
ornamentation where a three-dimensional applique is affixed to this
surface (Supplemental Answer, pages 4, 5, and 7). The examiner
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