Appeal No. 2000-009
Application 08/742,426
appealed claims even in view of the claim language “consisting essentially of” because we find
no disclosure in the written description in appellants’ present specification which establishes that
this amount of this component would adversely affect the basic and novel characteristics of the
claimed glass compositions. See, e.g., PPG Industries, Inc. v. Guardian Indus. Corp., 156 F.3d
1351, 1354-57, 48 USPQ2d 1351, 1353-56 (Fed. Cir. 1998). Furthermore, appellants have
calculated the “ratio of FeO/total iron” in the sample to be 0.195, and the appellants findings
must stand until the examiner places rebuttal evidence in the record. We further note that
appellants argue that claims 18 and 20 are thus not anticipated, which argument affects only
claims 18, 20 through 22, 26 and 30, as independent claims 19 and 23, and thus claims 24, 25, 28
and 32, each specify a “ratio of FeO/total iron less than 0.35,” which, of course, encompasses
“0.195.”
Accordingly, on this record, the examiner has failed to demonstrate that the evidence in
the Ford letter with respect to the St. Gobain glass establishes that a glass composition and a
glass made therewith falling within the appealed claims was in public use or on-sale within the
meaning of § 102(b) by a preponderance of the evidence.
The evidence in the Ford letter with respect to the Scorpio glass establishes that Ford had
possession of the glass in a 1987 Scorpio car that was sold in the United States more than one
year prior to the effective filing date of the ‘886 application by a preponderance of the evidence.
Indeed, the identification of the rear door glass of a 1987 Scorpio obtain from “Ernie’s Auto
Parts” on “3/24/94” was tested on June 16, 1994, and the whole car, traced by its VIN number,
was shown to have been in the possession of and sold by Ford. However, we found above that
the examiner has not rebutted appellants’ arguments with respect to the reported values for redox
ratio and ultraviolet transmittance. With respect to the redox ratio, we observe that appellants’
arguments are made only with respect to appealed claims 18 and 20, and thus also with respect to
appealed claims 21, 22, 26 and 30, and would not apply to claims 19 and 23 through 25, 28 and
32, which latter claims require a “ratio of FeO/total iron less than 0.35” and thus encompass a
redox ratio of “0.206.” With respect to the ultraviolet transmittance, we agree with appellants
patenting include revisiting a requirement for restriction under 35 U.S.C. § 121, see MPEP §§
804.01 and 804.04 (7th ed., Rev. 1, Feb. 2000; 800-24, 800-25 and 800-30).
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