Appeal No. 2005-1369
Application 10/307,464
surface of an otherwise inexpensive, unbleached, paperboard
material to a more . . . smooth surface” (id. at lines 55-59).
In addition, on page 1 of the Reply Brief, the
appellants state:
Assuming, arguendo, that Cavagna . . .
requires a substrate smoothness within the
claimed range the reference in no way teaches
or suggests a specific smoothness for a
coating applied to the substrate.
This statement, however, does not militate against the propriety
of the examiner’s rejection. As explained above, notwithstanding
the absence of an express teaching, a finding of anticipation
nevertheless is correct when properly based on a theory of
inherency. Schering Corp., 339 F.3d at 1379, 67 USPQ2d at
1668-69.
The appellants further argue that the claim 1
requirement for a polymer film applied by extrusion or by hot
melt adhesion distinguishes from Cavagna because patentee’s
polymer film or coating is applied via a printing method. This
argument is not convincing. As properly explained by the
examiner in the Answer, claim 1 is directed to a product in the
form of a laminated board structure, and the patentability
determination of this claim is based on the product itself rather
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007