Appeal No. 2005-2239
Application No. 10/448,905
established that carbon monoxide would have been present in the
gas plasma of Tsai since nowhere does Tsai require carbon
monoxide in its gas plasma.
Regarding claim 14, Appellants argue that Tsai discloses
introducing argon gas at a rate of “between about 100 to 200
sccm.” Appellants argue that “the mere fact that a prior art
range touches the Appellants’ range is insufficient to summarily
declare anticipation.” (Brief, p. 11). We agree with
Appellants.6 Due to the considerable difference between the
claimed range and the range in the prior art, it is
inappropriate to conclude that the prior art describes the
claimed range with sufficient specificity to anticipate this
limitation of the claim. Atofina v. Great Lakes Chemical Corp.,
441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006). (The
disclosure of a range does not constitute a specific disclosure
of the endpoints of that range or each of the intermediate
points of that range).
6 In the event of further prosecution, the Examiner is
advised to consider the applicability of an obviousness rejection
consistent with In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d
1379, 1382 (Fed. Cir. 2003) and Titanium Metals Corp. v. Banner,
778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
9
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