Appeal No. 2006-2413 Page 10
Application No. 10/250,412
In our view, the examiner’s concession is correct. That is, the examiner has not
demonstrated that Pomerhn explicitly or inherently describes a water to Portland
cement ratio of about 1:3 to 3:5, as required in claims 27 and 54 and their dependent
claims.
Pomerhn discloses preparing asbestos-containing cement sheets using
“[s]ufficient water as required in the well-known cylinder method of wet forming.”
Pomerhn, column 1, lines 66-68; column 3, lines 49-51. Thus, the precise amount of
water used is not clear from the reference’s disclosure. The reference therefore does
not explicitly disclose the water:cement ratio recited in claims 27 and 54.
In establishing the inherent disclosure of a reference, the examiner may refer to
extrinsic evidence demonstrating that the descriptive matter missing from the reference
is necessarily present in the reference’s disclosure. Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991) (“To serve as an
anticipation when the reference is silent about the asserted inherent characteristic, such
gap in the reference may be filled with recourse to extrinsic evidence.”).
However, the examiner has not explained why the water:cement ratio used in
Pomerhn’s “well-known cylinder method of wet forming” inherently falls within the
amount recited in claims 27 and 54. Because the examiner has not explained why
Pomerhn explicitly or inherently describes the water:cement ratio recited in claims 27
and 54, the examiner has, in our view, failed to make out a prima facie case of
anticipation with respect to those claims.
With respect to claims 55 and 56, the examiner does not point to, and we do not
see, where Pomerhn discloses preparing a cementitious mixture in a compressed gas
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