Appeal No. 2000-1832
Application 08/868,736
steps of adding the specified “addition-polymer powder” product to ingredients commonly found
in “a binding mineral building materials.” See Exxon Chemical Patents Inc. v. Lubrizol Corp.,
64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir. 1995) (“The claimed composition is
defined as comprising - meaning containing at least - five specific ingredients.”); In re Baxter,
656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981) (“As long as one of the monomers
in the reaction is propylene, any other monomer may be present, because the term ‘comprises’
permits the inclusion of other steps, elements, or materials.”).
In comparing appealed claims 32 and 33 to the disclosures of each of Penzel, Schulze and
Pak-Harvey in light of the positions advanced by appellants and the examiner with respect to the
grounds of § 102(b), we find that the examiner has not carried the burden of establishing a prima
facie case of anticipation in the first instance by pointing out where each and every element of the
claimed process encompassed by each of appealed claims 32 and 33, arranged as required by the
claim, is described identically in each reference, respectively, either expressly or under the
principles of inherency. See generally, In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138
(Fed. Cir. 1986); Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730
F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). Indeed, as appellants point out, the
claimed processes as encompassed by the appealed claims require the sequence of steps with
respect to the addition of the first and second assistants to form an addition-polymer powder prior
to the additional of any other ingredient of a binding mineral building material, and the examiner
has not established that the second assistant is added to the redispersible addition-polymer
powder before any other ingredient. Thus, contrary to the position taken by the examiner, in this
instance the order of mixing the ingredients of a binding mineral building material, including the
combing of ingredients of the redispersible addition-polymer powder composition, does matter.
Accordingly, we reverse each of the grounds of rejection under § 102(b).
With respect to the grounds of rejection under § 103(a) over Penzel and Pak-Harvey,
respectively, which is based on the same evidence in these references, we find that the examiner
has not carried the burden of establishing a prima facie case of obviousness by showing that
some objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in this art would have led that person to
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