Appeal No. 2002-0322
Application 08/681,870
therefore, it is inappropriate for Verdegaal to rely on that distinction. [Citations omitted.]”).
Furthermore, contrary to appellants’ arguments, we again find that Horiuchi Examples 1 and 2
encompass the combination of the two copolymers recited in appealed claims 1 and 10, the metal
cation neutralized acid polymer being specified as optional in the claims. We cannot agree with
appellants’ argument that the present claims do not embrace the ionomer blends as shown in
Horiuchi Examples 1 and 2 (reply brief, page 3) for several reasons. First, the metal cation
neutralized acid copolymers of the appealed claims are indeed ionomers as taught by Horiuchi.
And, second, appealed claims 1 and 10 are open-ended with respect to other components in
addition to the saponified ethylene copolymer because of the transitional term “comprising”
alone and in combination with the use of the indefinite articles “a” in claim 1 and “an” in claim
10 with respect to the neutralized acid copolymers. See generally, KCJ Corp. v. Kinetic
Concepts Inc., 223 F.3d 1351, 1356, 55 USPQ2d 1835, 1839-40 (Fed. Cir. 2000); Exxon Chem.
Pats., 64 F.3d at 1555, 35 USPQ2d at 1802; Baxter, supra. Accordingly, we remain of the
opinion that Horiuchi shows exactly what is claimed on the basis of the saponified ethylene
copolymer alone and as combined with the neutralized acid copolymer as we discuss above.
Accordingly, based on our consideration of the totality of the record to the extent relied
on by appellants in the brief and reply brief, we have weighed the evidence of anticipation found
in Horiuchi with appellants’ countervailing evidence of and argument for no anticipation in fact
and find that the claimed invention encompassed by appealed claims 1 through 8 and 10 through
15 are anticipated as a matter of fact under 35 U.S.C. § 102(e).
However, we reach a different result with respect to appealed claim 9 which we
interpreted above to require in the golf ball cover composition an ethylene copolymer that is not
saponified and, when present, an acid copolymer that is not neutralized, the golf ball cover
further including a specified metal salt. We thus cannot agree with the examiner that appealed
claim 9 is prima facie anticipated by the compositions disclosed in Horiuchi because the
composition disclosed therein does not contain an unsaponified ethylene copolymer and an
unneutralized acid copolymer, and there is no disclosure that the cover further includes a metal
salt. Accordingly, because the disclosure of Horiuchi does not amount to a description of the
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