Appeal 2006-3021
Application 09/782,337
skill in this art the modification of the similar Akao laminate to provide an
extending edge for the advantages of more efficient installation and labor
cost savings (see Foster, col. 2, ll. 40-50; and col. 7, ll. 49-57). The
Examiner does not rely solely on the “same field of endeavor” as a reason
for the combination of references.
Appellants further argue that, even if one were motivated to combine
the teachings of Akao and Foster, one would not arrive at any embodiment
of the claimed invention (Br. 5). Appellants argue that the transitional
phrase “consisting essentially of” recited in claim 1 on appeal does not
permit an additional independent layer to be included in the claim, whereas
Akao uses a separate adhesive layer to attach the film to the porous sheet
(Br. 5; Reply Br. 4). Appellants also argue that Akao “teaches away” from
the claimed invention since this reference teaches that heat-sealing the films
is not desirable, and thus Akao teaches that one must use an adhesive and
specifically not use heat-lamination (Br. 5; Reply Br. 4).
Appellants’ arguments are not persuasive. As correctly stated by the
Examiner (Answer 9), Appellants have not disclosed what “consisting
essentially of” specifically excludes or what are the “basic and novel”
characteristics of the invention. Appellants’ argument is particularly weak
that the adhesive layers taught by Akao would be excluded from claim 1 on
appeal when Appellants’ own dependent claims require an adhesive layer
(see claims 22 and 30) and the Specification teaches that adhesive layers
may be included between the resin films and the central foam layer
(Specification, p. 3, ll. 22-23; p. 4, ll. 27-28; p. 9, ll. 19-24; and p. 10, ll. 15-
17). See In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (C.C.P.A.
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