Appeal No. 2006-0548
Application 10/381,877
Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974); see also In re Fracalossi,
681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982).
Considering now the ground of rejection based on Percec, appellants again rely on a
“teaching away” argument, pointing to Percec’s description of the disclosure of a particular
United States Patent at col. 2, ll. 5-7 (brief, pages 17-18), which, of course, is not the multi-layer
films specifically disclosed by Percec. Appellants also argue that the claimed sheeting is not
similar to that of Percec because the former is a barrier for soil treating agents and the latter is a
barrier film for packages, and therefore, “the packaging film of Percec would not be effective for
the soil treating system of the present invention,” again relying on “unexpected mechanical
properties” of the claimed polyamide films “compared to existing systems,” contending that
“Percec teaches away from the use of polyamide as the main strengthening layer” (id., pages
17-21).
Arguments with respect to “teaching away” and “unexpected mechanical properties” are
not relevant to the issue of anticipation, as we discussed above. Furthermore, the examiner finds
that specific multilayer films as disclosed by Percec contain polyamide in the outer and inner
layers, including the combination of polyamide with different polymers, and that the films thus
would fall within the claimed sheeting as a matter of fact (Office action, page 3). Appellants
have not advanced argument established otherwise with respect to the relied on disclosure of the
reference.
Accordingly, we have again considered the totality of the record before us, weighing all
of the evidence of anticipation found in Basset and in Percec with appellants’ countervailing
arguments for non-anticipation in the brief and reply brief, and based thereon, conclude that the
claimed invention encompassed by appealed claims 1 through 8, 10 and 11 would have been
anticipated as a matter of fact under § 102(b).
Turning now to the ground of rejection of appealed claim 9 under § 103(a) over Basset.
We cannot agree with appellants’ argument that the disclosure at col. 2, ll. 3-4, of Basset,
discussed above, and at col. 2, ll. 5-7, of the reference, which involves only a “comparison with a
polyethylene film” and not “other films made from essentially polyamide and polyethylene” as
appellants contend, would teach away from the film disclosed by Basset on which the examiner
relies (brief, pages 17-18). In fact, the film of Basset falls within appealed claim 9, as we have
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