Appeal 2007-1309
Application 10/873,241
708-09, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990). "[A] prima facie case of
anticipation [may be] based on inherency." In re King, 801 F.2d 1324, 1327, 231
USPQ 136, 138-39 (Fed. Cir. 1986).
ANALYSIS
Appellants argue claims 10 and 11 as a group. As such, we select claim 10
as the representative claim, and claim 11 stands or falls with claim 10. 37 C.F.R.
§ 41.37(c)(1)(vii) (2006). In particular, Appellants argue that Ortwein does not
anticipate claim 10 because vertical compression is not induced in the elastic
layer 3 as a consequence of the applied horizontal compression, and thus Ortwein
does not inherently disclose vertical compression (Appeal Br. 10).
The Examiner found that the prestressing condition caused by setting the
wedge in the Ortwein infrastructure, the further preliminary stress caused by using
wedges of various widths, and the even further stress caused by adding thin plates,
“would certainly produce a squeezing action on the elastic portions of the boot 3
fitted or wedged at both sides of the Ortwein’s rail, and thereby results in a
horizontal force component as well as a vertical force component as the elastic
boot portions being squeezed to fill in the web spaces at the sides of Ortwein’s
rail” (Answer 3-4). The Examiner thus found Ortwein’s boot inherently
experienced vertical compressive stress when the column of the boot lies wedged
into the rail (Final Office Action 2).
We find that the Examiner set forth a prima facie case of anticipation
because Figures 1 and 2 of Ortwein clearly show a snug fit of the elastic
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