Appeal 2006-2270
Application 10/478,569
Spitler US 6,166,109 Dec. 26, 2000
Claims 1-25 stand rejected under 35 U.S.C. § 102(e) as being anticipated
by Spitler.3
OPINION
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997);
accord Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047, 34 USPQ2d
1565, 1567 (Fed. Cir. 1995). Here, the Examiner has failed to establish,
prima facie, that Spitler anticipates Appellants’ claimed subject matter for
reasons set forth in the Briefs. Consequently, we reverse the stated rejection.
More particularly, the Examiner has not fairly established that Spitler
describes, with sufficient specificity to constitute an anticipatory reference,
a foam product that includes microspheres in the relative amounts and of a
size that necessarily corresponds to the sizes and relative amounts of
microspheres in the claimed product. Nor has the Examiner established,
prima facie, that Spitler anticipates the claimed method of making such a
product.
In this regard, the Examiner (Answer 3) refers us to “column 2, line
65 – column 6, line 12, and the examples, as well as, the entire document of
Spitler” for an alleged description of the claimed subject matter. However,
expressly incorporated by reference in Spitler not withstanding the
Examiner’s assertion to the contrary.
3 The application record suggests that Spitler is also available as prior art
under 35 U.S.C. § 102(b).
3
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