Appeal 2006-2901
Application 10/245,088
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 Koase anticipates Appellants’ claimed subject matter for
reasons set forth in the Briefs. Consequently, we reverse the stated rejection.
In particular, we note that the Examiner has not fairly established that
Koase furnishes a description of a doctor blade that includes a void content
between 50-80 percent, as here claimed. Concerning this matter, we note
that there is a dispute between the Examiner and Appellants with respect to
whether the broadest reasonable interpretation of the claimed void content
limitation would have been understood by one of ordinary skill in the art as
requiring a void content measured by volume as Appellants assert or may
include a void volume implied by the weight percent of resin added to a
woven felt of a doctor blade, as the Examiner seemingly suggests by the
references to Koase at p. 3, ll. 1-9. Compare Br. 5-8 with the Answer 3-5.
We agree with Appellants on this matter for reasons stated in the
Brief. In particular, it is manifest that the void content of an object is
measured in terms of volume, not weight percent in that a void space would
be readily understood as contributing little or no weight to the object.2 Nor
has the Examiner pointed to anything inconsistent in Appellants’
2 This is not to say that a correlation between a weight such as a basis weight
and void volume could not be determined/exist for a specific doctor blade
component material and a particular method of making same.
3
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