Appeal 2006-1080
Application 10/109,343
encompassed by claim 1 over the teachings of the reference, because as we
have found, it is clear from the teachings of the reference that penetration
would necessarily inherently occur and would have been so recognized from
the teachings of the reference by one of ordinary skill in the art. Stern
provides further evidence in this respect. See Skoner, 517 F.2d at 950-51,
186 U.S.P.Q. at 82-83. Thus, not only would Jackson have taught forming a
coating of coal tar pitch of about 5 mil on top of the porous substrate but
also applying sufficient coal tar pitch to penetrate the porous substrate,
which combined would reasonably appear to fall within the ranges specified
in claim 1 as we interpreted this claim above.
We cannot agree with several points raised by the dissent with respect
to the Examiner’s position (see below p. 15). First, the Examiner has in fact
identified the bituminous composition “coal tar pitch” in Jackson and
established that one of ordinary skill in this art would have reasonably
expected this material to have the properties falling within those specified in
appealed claim 1 for “coal tar pitch” (Answer 3-4). We pointed out that
Appellants do not dispute the Examiner’s findings (see above p. 4). Second,
with respect to the claim limitation that “at least about 10% of the [coal tar]
pitch penetrates into the porous board or fibrous material,” we found that
one of ordinary skill in this art would have recognized that the application of
the hot coal tar pitch to a foamed sheet to form the desired impervious
coating following the teachings of Jackson must result in the coal tar
penetrating the porous foam surface of the sheet (see above pp. 5-6). As the
Examiner points out (Answer 3-4), Stern evinces that bituminous material
penetrates into the pores of foam insulation(see above p.6), and we agree
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