Appeal No. 2003-1960
Application No. 09/830,841
discloses the claimed molar ratio with “sufficient specificity” to
constitute anticipation (Answer, page 5). Based on the disclosed
preferred range of Renzi for (C)/(B+C), the examiner concludes that
both patentees and appellants claim an amount of 20% by weight
(id.). In other words, the preferred range of Renzi includes a
lower limit of 20% by weight for the amount of (C)/(B+C), which
touches the 20% by weight upper endpoint of the claimed range.3
Anticipation is a question of fact. See In re Paulsen, 30
F.3d 1475, 1478, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994). It is
well settled that the initial burden of proof in establishing
unpatentability, on any ground, rests with the examiner. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). “[A]nticipation under § 102 can be found only when the
reference discloses exactly what is claimed and that where there
are differences between the reference disclosure and the claim,
the rejection must be based on § 103 which takes differences into
account. D. Chisum, Patents § 3.02.” Titanium Metals Corp. of
3Even assuming that the examiner’s rejection and analysis
were correct, the examiner has not explained why claim 26 should
be included in a rejection based on anticipation involving
“touching” at an endpoint. See Haynes Int’l, Inc. v. Jessop
Steel Co., 8 F.3d 1573, 1577 n.3, 28 USPQ2d 1652, 1655 n.3 (Fed.
Cir. 1993); Titanium Metals Corp. of America v. Banner, 778 F.2d
775, 781, 227 USPQ 773, 779 (Fed. Cir. 1985). See the Brief,
page 9, regarding separate arguments for claim 26.
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