Appeal 2007-0404
Application 10/684,611
(9) Hayes teaches that the polymeric film of his invention may be
combined with other polymeric materials to form laminates or
multilayer films with improved water vapor resistance (col. 9, l.
61-col. 10, l. 8).
Under § 102, anticipation requires that the prior art reference disclose,
either expressly or under the principles of inherency, every limitation of the
claim. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir.
1986). During examination proceedings, claims are given their broadest
reasonable interpretation as understood by one of ordinary skill in the art
consistent with the specification. See In re Morris, 127 F.3d 1048, 1054, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Graves, 69 F.3d 1147, 1152, 36
USPQ2d 1697, 1701 (Fed. Cir. 1995). The Examiner, if relying upon the
theory of inherency, must provide a basis in fact and/or technical reasoning
to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.
See In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed.
Cir. 1999). If a prior art product at any point in time is identical to the
claimed product, the claimed product is anticipated by the prior art product.
See Exxon Chem. Pats. Inc. v. Lubrizol Corp., 64 F.3d 1553, 1558, 35
USPQ2d 1801, 1804-05 (Fed. Cir. 1995).
Applying the preceding legal principles to the factual findings on this
record, we determine that the Examiner has established a prima facie case of
anticipation in view of the reference evidence. All of the claims on appeal
require that the foam cells “contain carbon dioxide” (see claim 1 on appeal).
Giving this language its broadest reasonable interpretation, we construe this
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