Appeal No. 1999-0808 Page 3
Application No. 08/645,397
The question at issue here is whether Figlarz anticipates the claimed invention. In order for
Figlarz to anticipate, Figlarz must disclose every limitation of the claimed invention, either explicitly or
inherently. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). “The
identical invention must be shown in as complete detail as is contained in the ... claim.” Richardson v.
Suzuki Motor Co. Ltd., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir.), cert. denied, 493
U.S. 853 (1989). We find that Figlarz does not describe each and every step of the claimed process to
the same extent as claimed.
Figlarz describes a polyol process similar to that of the claims. However, Figlarz dissolves or
suspends only one metal compound not “at least two metal compounds” as required by all of the claims
(See claims 1 and 13). Throughout the disclosure of Figlarz, reference is made to a single starting
material (col. 1, line 61, “a solid initial reactant compound”; col. 2, line 15-22, nickel carbide formed
from nickel hydroxide; col. 2, lines 22-23, cobalt carbide from cobalt hydroxide). All the examples use
single metal compounds to form single metal products (Examples 1-31). Moreover, the process is
intended to be used to obtain pure metals (col. 1, lines 24-27) or single metal carbides (col. 2, lines 11-
14).
Citing column 1, line 12 of Figlarz, the Examiner makes a finding that “[m]etal powders made
by this process maybe [sic, may be] in the form of composites” (Final Rejection, page 3). However,
this passage does not describe dissolving or suspending at least two metal compounds in the polyol in a
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007