Appeal 2006-2950
Application 10/036,126
While there is nothing inherently wrong with using a functional
limitation to define a product or an article, such a usage has a risk. When a
claimed product and a product suggested by the prior art reasonably appear
to be substantially the same, the burden is shifted to the Appellants to prove
that the suggested prior art product does not possess the claimed functional
characteristics. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1432 (Fed. Cir. 1997); In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430,
433-34 (CCPA 1977).
“[M]ere statement of a new use for an otherwise old or obvious
composition cannot render a claim to the composition patentable.” In re
Zierden, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969).
“[T]he term ‘comprises’ permits the inclusion of other steps,
elements, or materials.” In re Baxter, 656 F.2d 679, 686, 210 USPQ 795,
802 (CCPA 1981).
VI. FINDINGS OF FACT AND ANALYSES
The Examiner has found (Answer 3-4), and the Appellants have not
specifically challenged (Br. 2-8 and Reply Br. 1-3) that:
Muys et al disclose transparent-antistatic coating compositions
comprising:
(i). Po[l]ythiophene/polyanion dispersion with a particle size of
5 nm-1 micron, wherein [the] polyanion compound being
polyacrylic acid or polystyrene sulfonic acid (col-3, Ln-60 to
Col-4, Ln:24; Col 5, Ln 16-65; Col-10, Ln: 8-54; Col-12,
Table-1)<Limitation of instant Claims 1-2, 4-5, 10, 17-19>,
(ii). Various solvents/additives such as phenolic compounds,
aliphatic polyhydroxy compounds such as glycerol and
sorbitor<Limitation of instant Claims: 1, 3, 6, 7, 9, and 11>,
monomeric carboxylic acids such as furancarboxylic acid and
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