Appeal 2006-2468
Application 10/149,875
calorie composition with both ingredients in concentrations within the
claimed ranges. See Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775,
782, 227 U.S.P.Q. 773, 779 (Fed. Cir. 1985)(Disclosure of a discrete
embodiment of an alloy composition with metal concentrations within the
claimed ranges anticipated the claim); In re Gosteli, 872 F.2d 1008, 1010,
10 U.S.P.Q.2d 1614, 1616 (Fed. Cir. 1989)(“Section 102(e) bars the
issuance of a patent if its generic claims are anticipated by prior art
disclosing individual chemical species.”); In re Slayter, 276 F.2d 408, 411,
125 U.S.P.Q. 345, 347 (C.C.P.A. 1960)(“It is well settled that a generic
claim cannot be allowed to an applicant if the prior art discloses a species
falling within the claimed genus.”). The Examiner, however, makes no
finding that Seiden describes such a working example. Rather, the Examiner
relies upon the broader disclosure in Seiden of formulating a reduced calorie
fat composition from about 10% to about 95% PFAP (Seiden, col. 2, ll. 22-
28) with from about 5 to about 90% RCT (Seiden, col. 2, ll. 29-46) coupled
with a disclosure that the composition is particularly useful for PFAPs that
are liquid, i.e., with minimal or no solids content as claimed (Seiden, col. 5,
ll. 32-35). The Examiner also finds that “claims 1, & 28 and column 10,
lines 55 set forth the specific level of 65% component (a).” (Answer 5).
Claims 1 and 28 and column 10, line 55 describe 65% in the context of a
preferred range of about 65% to about 95% articulated for PFAP.
As a first matter, we cannot agree with the Examiner that Seiden’s
disclosure of the endpoint of 65% is either representative of a discrete
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