Appeal No. 2000-0822
Application 09/037,555
49 through 51, which limitation, therefore, did not introduce new concepts in violation of this
section of the statute.
Accordingly, we reverse the rejection of appealed claims 49 through 51 under 35 U.S.C. §
112, first paragraph, written description requirement.
Turning now to the ground of rejection of appealed claim 53 under § 102(b) as
anticipated by Mammino, it is well settled that in order to establish a prima facie case of
anticipation of a product claimed in product-by-process format, the examiner must show that it
reasonably appears that the prior art product made by a different process is identical to the
claimed product. See generally, In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655, 1657-58
(Fed. Cir. 1990), and cases cited therein (“The Board held that the compositions claimed by
Spada ‘appear to be identical’ to those described by Smith. While Spada criticizes the usage of
the word ‘appear’, we think that it was reasonable for the PTO to infer that the polymerization by
both Smith and Spada of identical monomers, employing the same or similar polymerization
techniques, would produce polymers having the identical composition.”).
The examiner cites col. 4, lines 15-18, of Mammino wherein it is disclosed that solution
coating techniques generally are “undesirable” (answer, page 4). We find that Mammino further
explains at col. 4, lines 18-23, that this “is so because most of the coating material is found to
reside in the pores of the carrier particle . . . .” Thus, Mammino discloses a “powder coating
technique” by which “the majority of the coating material particles are fused to the carrier
surface,” without any indication of the result thereof with respect to the pores of the carrier
particle (col. 4, lines 40-51). The examiner points to Mammino Examples I, IV and V,
explaining that “[i]t appears that at least a portion of the carrier pores would contain resin
because the resin is either melted in which case it would flow or is dissolved in a solvent and
spray dried in which it case it would flow and enter the carrier before the solvent evaporated”
(id., pages 4-5).
The examiner has not provided a scientific explanation or evidence establishing that the
particular coating composition “dissolved in methyl ethyl ketone” and then “spray-dried onto the
carrier cores to provide them with a coating” in Mammino Example I, and/or the particular
coating compositions in powder form mixed with carrier cores in the absence of solvent and then
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