Appeal 2006-2730
Application 10/415,631
We first consider the Examiner’s rejection of claims 11-16, 21, and 22
under 35 U.S.C. § 102(b) as being anticipated by Pelrine. Anticipation is
established only when a single prior art reference discloses, expressly or
under the principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital Data Systems,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984); W.L. Gore
and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303,
313 (Fed. Cir. 1983).
The Examiner has indicated how the claimed invention is deemed to
be fully met by the disclosure of Pelrine (Answer 2-3). Regarding
independent claim 11, the Examiner indicates that the limitation calling for
forming the waved area on the elastomeric body prior to the body being at
least partially covered by the electrode is a product-by-process limitation
that does not patentably distinguish over the structure of Pelrine (Answer 3;
emphasis added).
Appellants argue that the Examiner improperly declined to give
patentable weight to this product-by-process limitation. Appellants contend
that forming the waved area on the elastomeric body prior to applying the
electrode implicitly imparts structural characteristics to the product that are
distinct from Pelrine. According to Appellants, these structural distinctions
include, among other things, a stress-free structure (Br. 5-6; Reply Br. 3-4).
Appellants further note that, unlike the claimed invention,
corrugations in Pelrine’s polymer arise after it has been pre-strained,
attached with electrodes, and allowed to relax. Therefore, the shape,
amplitude, and frequency of Pelrine’s corrugations depend upon (1) the
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