Appeal No. 2005-1574
Application 09/753,428
reference discloses exactly what is claimed and that where there are differences between the
reference disclosure and the claim, the rejection must be based on § 103 which takes differences
into account. D Chisum, Patents § 3.02.”).
Accordingly, we reverse the ground of rejection of appealed claims 21 through 24 under
35 U.S.C. § 102(b) as anticipated by Cope. See Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655,
1657 n.3.
Turning now to the rejection of claim 21 under § 103(a), we find that one of ordinary
skill in the art working within the teachings of Cope would have reasonably arrived at products
encompassed by this claim. Indeed, on this record, as we found above, the foaming of the
extruded material before entering the shaper as disclosed by Cope would reasonably appear to
result in some bubbles migrating to and bursting on the surface of the extruded material in the
same manner as in the foaming of the extruded material before entering roller system 117 in
methods encompassed by claim 21 disclosed to result in the “surface embossed texture.” We
find that at least a part of the surface of the product of Cope would retain such characteristics
because the smooth cylinder wall of the shaper would affect the surface as well as the shape of
the product in the same or similar manner as the nips of the smooth rollers in the cooling roller
systems of methods encompassed by claim 21. Indeed, Cope discloses that the products “have a
smoother skin” than the prior art, not the skin is “smooth” per se, the “smooth” appearance of
the illustrated embodiments of Cope FIGs. 4 and 5 notwithstanding.
Accordingly, based on the substantial evidence in Cope, we are of the opinion that the
claimed synthetic wood-like products encompassed by appealed claim 21 reasonably appear to
be identical or substantially identical to the products disclosed by Cope, even though the
reference is silent with respect to the characteristics of “surface embossed texture” and specified
Shore Hardness and the products of the reference are prepared by methods which use a shaper
instead of roller systems to progressively cool and shape the product. Thus, the burden has
shifted to appellants to establish by effective argument or objective evidence that the claimed
product patentably distinguishes over the disclosure of Cope even though the rejection is based
on § 103(a). See generally, In re Best, 562 F.2d 1252, 1254-56, 195 USPQ 430, 432-34
(CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes, the PTO can require
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