Appeal 2007-1928
Application 10/163,282
language. Therefore, the customizable feature cannot be regarded as a structural
limitation in any positive sense, and Appellants cannot rely on it to distinguish
over the prior art. Consequently, the claims containing the customizable limitation
are seen to read on mere bits of stock material or confetti made of such stock
materials. As we read the above-noted case, the stock material does not have to
possess the capability of being selectable and/or modifiable, since customizable
indicates that being custom-selected or custom-modified is an optional feature of
Appellants’ invention. As such, claim 205, taken as an example, is directed merely
to any article that has two or more sides, inasmuch as the article so claimed may
never be required to be customized.
Stated another way, the court’s analysis of the limitation of “crimpable” is
that the claim is directed to two groups of articles—articles that are crimped and
articles that are never required to be crimped. Since articles of the second group
meet the claim, the expression “crimpable” cannot be regarded as a structural
limitation that positively limits the claimed subject matter structurally.
We further note, however, that the Examiner has shown the prior art to
contain stock materials and confetti that can be selected and/or modified, some
prior art specifically customized by having an image printed thereon. So in this
sense the Examiner’s applied prior art is narrower than that required by
Appellant’s claims. This is not a problem for the Examiner, inasmuch as a species
is anticipatory of a genus. Titanium Metals Corporation of America v. Banner,
778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir.1985) (holding that an earlier
species disclosure in the prior art defeats any generic claim).
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