Appeal No. 2002-1489
Application 09/173,456
prepare the phosphorous containing alloys of Gamblin and Myers would reasonably be
“amorphous non-laminar” phosphorous containing alloys as specified by the appealed claims.
Indeed, Ratzker does disclose that “[w]hen deposition was performed on a rotating disc electrode
at rotation speeds, no layers were observed” in what is described as “homogeneous material”
(page 81), which disclosure is relied on by the examiner to establish that the reference “defines
specific conditions upon how one will obtain a non-laminar structure when producing amorphous
. . . alloys by electrodeposition” (answer, pages 4-5).
However, appellants submit that Ratzker fails to “address detailed ways to control the
deposition of the alloy to produce the desired [claimed] structure,” and point to the claimed
“structural limitations made possible by maintaining the electrodeposition cathode efficiency
within a narrowly defined range” (brief, 7). We also fail to find in Ratzker any disclosure with
respect to control of cathode efficiency.
In response, the examiner takes the position that all non-laminar products are the same
(answer, page 6) and that the burden thus shifts to appellants to point out “any feature of the
claimed product not known or obvious from the prior art products as discussed supra,” finding
“no distinction . . . between any product-by-process aspects of the claimed invention and the
disclosures of the applied prior art” (id., page 7). We fail to find any evidence in the record
establishing that all non-laminar phosphorous alloys are indeed the same regardless of the
method of preparation.
Thus, we find that the examiner has failed to account for the cathode efficiency limitation
which characterizes in part the claimed alloy, and we fail to find any evidence on this record
which establishes that this claim limitation can be ignored. It is well settled that the examiner
must considered all claim limitations in determining whether the claimed invention as defined by
all of the claim limitations of the claim complies with any and all applicable statutory provisions.
See, e.g., In re Geerdes, 491 F.2d 1260, 1262-63, 180 USPQ 789, 791-92 (CCPA 1974)
(“[E]very limitation in the claim must be given effect rather than considering one in isolation
from the others.”); see also appellants’ analysis (brief, page 7). Thus, there is no evidence of
record establishing that, prima facie, it reasonably appears that the alloys of the combined
teachings of Gamblin and of Myers each with Ratzker are identical or substantially identical to
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