Appeal No. 2002-0322
Application 08/681,870
monomer and the saponification of the ethylene copolymer to the corresponding neutralized acid
moiety containing copolymer occurs. All that is required for the composition of appealed claim
1 is the ethylene copolymer when it has been saponified to some extent, and for the composition
of appealed claim 10 is the ethylene copolymer that is saponified to the extent that about 5% to
90% of the ester moieties form alkali metal neutralized acid moieties. See Exxon Chem. Pats., 64
F.3d at 1555-58, 35 USPQ2d at 1802-05. Indeed, we find no basis in appealed claims 1 and 10
to read therein any such limitation from the specification and its examples in this respect, see
generally, Zletz, supra, Priest, supra; Prater, supra, and, as we pointed out above, appellants’
intentions do not limit the scope of appealed claims 1 and 10.3 See generally, Zletz, supra;
Cormany, supra.
Turning now to application of Horiuchi to appealed claims 1, 9 and 10 by the examiner
under 35 U.S.C. § 102(e), it is well settled that the examiner has the burden of establishing a
prima facie case of anticipation under § 102(e) in the first instance by pointing out where each
and every element of the claimed invention, arranged as required by the claim, is described
identically in a single reference, either expressly or under the principles of inherency, in a manner
sufficient to have placed a person of ordinary skill in the art in possession thereof. See generally,
In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). The examiner can
establish a prima facie case of anticipation by showing that it reasonably appears from a
reference that the product thereof is identical to the claimed product. See generally, Spada, 911
F.2d at 708-09, 15 USPQ2d at 1657-58 (“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.”); In re Best, 562 F.2d
1252, 1254-56, 195 USPQ 430, 432-34 (CCPA 1977).
3 We leave it to the examiner to consider the issues of whether appealed claims 1, 9 and 10
comply with 35 U.S.C. §§ 112, first paragraph, written description requirement, and second
paragraph, “claiming the subject matter which the applicant regards as his invention,” upon
further prosecution of the appealed claims subsequent to the disposition of this appeal.
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