Appeal 2006-2690
Application 10/101,242
argue that in Porth the lower portions of the glass beads are embedded in a
removable carrier layer and the upper portions of the glass beads are firmly
anchored in a layer of a permanent, uncolored, clear, transparent binder
material (Br. 8-9).
Appellants’ arguments are not persuasive. As previously discussed,
an argument that the prior art is non-analogous is not germane to a rejection
under § 102(b). See Self, supra. As correctly stated by the Examiner
(Answer 6), the claimed substrate corresponds to the composite layer
disclosed by Porth, and all that claim 52 on appeal requires is that at least a
portion of the particles are incorporated into the substrate.3
For the foregoing reasons and those stated in the Final Office action
and the Answer, we determine that the Examiner has established a prima
facie case of anticipation in view of Porth, which case has not been
adequately rebutted by Appellants. Therefore we AFFIRM the rejection of
claims 52 and 53 under § 102(b) over Porth.
E. The Rejection under § 103(a)
The Examiner presents findings regarding Long, the differences
between the claimed subject matter and the disclosure of Long, and
conclusions as to why the claimed subject matter would have been obvious
to one of ordinary skill in the art at the time of the invention (Final Office
action 4-6).
Appellants argue that Long is non-analogous art (Br. 5).4 Appellants
argue that Long does not teach an article having a surface comprised of
3 For the meaning of “incorporate,” see footnote 2 above.
4 Appellants present this argument with respect to the rejection over Long
based on § 102(b). We also will consider this argument with regard to the
rejection over Long under § 103(a).
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