Ex Parte Beckmann

Board of Patent Appeals and Interferences

Sep 17, 2004

09501013 (B.P.A.I. Sep. 17, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

Paper No. 16

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte FRIEDHELM BECKMANN
__________

Appeal No. 2004-2097
Application No. 09/501,013
___________

ON BRIEF
___________

Before PAK, OWENS, and DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2003) from the examiner’s final rejection of claims 1 and 3
through 22 (final Office action mailed Dec. 23, 2002, paper 7)
in the above-identified application.1
The subject matter on appeal relates to a sound and heat
insulation material comprising a specified core layer and a
specified covering layer. Further details of this appealed
Appeal No. 2004-2097
Application No. 09/501,013

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subject matter are recited in representative claim 1, the sole
independent claim on appeal, reproduced below:
1. A sound and heat insulation material,
comprising:
a core layer including fibrous material and
having at least one outer surface, said fibrous
material being provided with a fire retardant
additive; and
a covering layer including a foamable material
covering said core layer at said at least one outer
surface, said foamable material being at least
difficult to ignite and foaming at a given temperature
to insulate said core layer from high temperature and
oxygen.

The examiner relies on the following prior art reference as
evidence of unpatentability:
Murch 3,934,066 Jan. 20, 1976
Claims 1 and 3 through 22 on appeal stand rejected under 35
U.S.C. § 102(b) as anticipated by Murch. (Answer at 3-7.)
Because the examiner has not adequately established a prima
facie case of anticipation against the appealed claims, we
reverse.
“To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d

1 The final rejection of claim 2 has been expressly
withdrawn. (Examiner’s answer mailed Aug. 27, 2003, paper 12,
p. 2.)
Appeal No. 2004-2097
Application No. 09/501,013

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1429, 1431 (Fed. Cir. 1997). In addition, the prior art
reference must disclose the limitations of the claimed invention
“without any need for picking, choosing, and combining various
disclosures not directly related to each other by the teachings
of the cited reference.” In re Arkley, 455 F.2d 586, 587, 172
USPQ 524, 526 (CCPA 1972).
Murch discloses a fire-retardant intumescent laminate
system suitable for application to combustible or heat-sensitive
substrates to protect such substrates from fire and heat.
(Column 1, lines 5-8.) Specifically, Murch teaches an
intumescent laminate system comprising an intumescent layer
comprising a porous sheet material impregnated with an
intumescent composition and a flexible protective layer adhered
to the outer surface of the intumescent layer. (Column 2, lines
16-22.) According to Murch, “[t]he impregnated sheet material
is any sufficiently porous adsorbent material which will absorb
the intumescent composition.” (Column 3,lines 50-52.)
Regarding the protective cover layer, Murch discloses numerous
materials including “well known waterproofed and flameproofed
textile materials.” (Column 7, line 55 to column 8, line 31.)
Murch further teaches that “[t]he flexible protective cover may
Appeal No. 2004-2097
Application No. 09/501,013

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comprise more than one layer of material which may be the same
or different.” (Column 8, lines 43-57.)
The examiner’s position is that Murch’s protective cover
layer and the intumescent layer correspond to the here recited
“core layer” and “covering layer,” respectively, and that,
therefore, Murch’s intumescent laminate system anticipates the
invention recited in appealed claim 1. (Answer at 6.) We
cannot agree.
The examiner does not challenge the appellant’s contention
that the term “‘core’ is defined as ‘[a] central part of
different character from what which surrounds it’, ‘[t]he
interior part of a wall or column’” with any other dictionary
definition.2 (Appeal brief filed Jul. 7, 2003, paper 11, pages
7-8.) Rather, the examiner argues (answer at 6):
It is noted that the provided definition of core
is inconsistent with Appellants’ [sic] own claims.
Independent claim 1 claims a material that comprises:
a core layer having at least one outer surface and a
covering layer covering the core layer at said at
least one outer surface. The language used in the
claims indicates two layers...

2 Cf. In re Morris, 127 F.3d 1048, 1055-56, 44 USPQ2d 1023,
1029 (Fed. Cir. 1997) (“Absent an express definition in their
specification, the fact that appellants can point to definitions
or usages that conform to their interpretation does not make the
PTO’s definition unreasonable when the PTO can point to other
sources that support its interpretation.”) (Emphasis added.).
Appeal No. 2004-2097
Application No. 09/501,013

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While the examiner is correct that appealed claim 1 does
not expressly recite a layer in addition to the specified “core
layer” and “covering layer,” the term “core” would be understood
by one skilled in the relevant art that the claimed sound and
heat insulation material must necessarily include at least a
third layer next to the “core layer” on the surface opposite to
which the “covering layer” is situated. It is by now axiomatic
that every limitation or word in a claim must be considered in
adjudging the propriety of a rejection based on prior art. In
re Geerdes, 491 F.2d 1260, 1262-63, 180 USPQ 789, 791 (CCPA
1974) (“[E]very limitation in the claim must be given effect
rather than considering one in isolation from the others.”); In
re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)
(“All words in a claim must be considered in judging the
patentability of that claim against the prior art.”).
For these reasons, we reverse the examiner’s rejection
under 35 U.S.C. § 102(b) of appealed claims 1 and 3 through 22
as anticipated by Murch.3

3 As we discussed above, Murch teaches that the flexible
protective layer may comprise more than one layer. (Column 8,
lines 43-46.) Thus, the appellant and the examiner may wish to
Appeal No. 2004-2097
Application No. 09/501,013

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The decision of the examiner is reversed.
REVERSED

Chung K. Pak )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Terry J. Owens )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Romulo H. Delmendo )
Administrative Patent Judge )

RHD/kis

consider whether any or all of the appealed claims should be
rejected under 35 U.S.C. § 103(a) as unpatentable over Murch.
Appeal No. 2004-2097
Application No. 09/501,013

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