Appeal No. 2006-0548
Application 10/381,877
claim, is described identically in the reference, either expressly or under the principles of
inherency, in a manner sufficient to have placed a person of ordinary skill in the art in possession
thereof. See Spada, 911 F.2d at 708, 15 USPQ2d at 1657.
Considering first the ground of rejection based on Basset, appellants contend, with
respect to appealed claim 1, that this reference “specifically teaches away from the use of” the
claimed sheeting, pointing to col. 2, ll. 3-4, wherein the reference discloses that the sheeting
thereof which is, or includes as a layer, a film prepared from “at least one polyamide and at least
one polyolefin” (see, e.g., col. 1, ll. 43-46) is “not pierced when it is walked on, whereas a
polyamide film of the same thickness becomes pierced” (brief, pages 13-14). In this respect,
appellants argue that the reference “states that a polyamide film” like “a polyamide film of one
or more layers” as claimed, “does not perform satisfactorily in Basset’s invention,” and further
distinguishes “the polymer mixtures with polyolefin of Basset from other films made from
essentially polyamide and polyethylene” (id.). Appellants further argue that “the unexpected
mechanical properties of the polyamide film of the present invention when compared to existing
systems” is described in their specification (id., page 14). Appellants submit essentially the
same “teaching away” arguments with respect to claims 8, 10 and 11 (id., pages 14-16).
We cannot subscribe to appellants’ position. Whether Basset would teach away from the
claimed method is not an argument that addresses the issue of anticipation. See Celeritas
Technologies Ltd. V. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516,
1522 (Fed. Cir. 1998) (“[T]he question whether a reference ‘teaches away’ from the invention is
inapplicable to an anticipation analysis.”). Furthermore, the appealed claims clearly encompass
sheeting which is, or includes as a layer, a film prepared from “mixtures of a polyamide and one
or more different polymer,” as we have interpreted the claims above, which limitation certainly
includes the sheeting or layer prepared from a mixture of “at least one polyamide and at least one
polyolefin” taught by Basset. We find no basis in the language of the appealed claims or in the
written description in appellants’ specification on which to read into the claims any limitation
with respect to mechanical properties of the claimed sheeting, see Morris, 127 F.3d at 1054-55,
44 USPQ2d at 1027; Zletz, 893 F.2d at 321-22, 13 USPQ2d at 1322, and whether a property of a
claimed sheet would distinguish over the films of Basset is also not a consideration with respect
to the issue of anticipation. See, e.g., Spada, 911 F.2d at 709, 15 USPQ2d at 1658; In re
- 5 -
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007