Appeal No. 1999-0963 5
Application No. 08/787,189
may also contain water is a metal oxide. We find that the mere presence of a metal with a
complex anion, i.e., a silicate containing oxygen bonded thereto, is inappropriate to
conclude that the material is a metal oxide. It is well settled that an oxide is a binary
3
compound of oxygen generally with a metal. A silicate unequivocally fails to meet that
definition. Moreover, even if potassium silicate were to fall within the term “oxide,” it is
well settled “where an applicant claims, as here, a class of compositions, he must describe
that class in order to meet the description requirement of the statute.” In re Lukach,
442 F.2d 967, 968, 169 USPQ 795, 796 (CCPA 1971). We conclude that a single
example, even if directed to one species of a class is insufficient to describe the class as a
whole.
Based upon the above findings and consideration, the rejection of claim 23 by the
examiner under the first paragraph of 35 U.S.C. § 112 is sustained.
Rejections including Ugelstad
In order for a claimed invention to be anticipated under 35 U.S.C. § 102(b), all
of the elements of the claim must be found in one reference. Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir.
1991).
The appellants admit that, “[t]he reference teaches magnetic polymer particles
3Julius Grant Ed., Hackh’s Chemical Dictionary, p. 481 (4 Ed., New York, McGraw-Hill Book Co.,th
1972).
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