Appeal No. 2003-1960
Application No. 09/830,841
(5) Renzi discloses several examples with a molar ratio of
(A)/(B+C) at exactly 4/1 (Brief, page 9; Answer, page 5; Renzi,
at least Composition Nos. 1 and 4 in Table 1 of Example 4); and
(6) Renzi does not disclose any example where the amount of
(C) in the mixture (B+C) is less than 25% by weight (Brief, page 9;
Renzi, at least Compositions 1 and 2 in Table 1 in Example 4).
From these findings, the examiner concludes that all of the
limitations of claim 1 are met by the Renzi disclosure (Paper No.
7, page 2).
As framed by the examiner, the “only remaining issues are the
relative amounts and ratios of the various components” (Answer,
page 4) and the “sole question is whether the prior art disclosed
said components in the amounts as claimed” (Answer, page 5,
emphasis omitted).2 Based on the examples of Renzi disclosing a
molar ratio of (A)/(B+C) of 4/1, the examiner concludes that Renzi
2We note that neither appellants nor the examiner have
presented any analysis of the claim based on its format, i.e.,
claim 1 recites a liquid composition product obtained by a
process. A rejection based alternatively on section 102 or
section 103 of a product-by-process claim has different burdens
of proof for both appellants and the examiner. See In re Spada,
911 F.2d 705, 707-08, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990);
In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980);
In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA
1977); and In re Fessman, 489 F.2d 742, 744, 180 USPQ 324, 326
(CCPA 1974).
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