Appeal No. 2004-1348
Application No. 09/972,253
The sole issue on appeal regarding the § 102 rejection is
whether or not Zhao describes the claimed amount of photo-
initiator in the disclosed water-based, pigmented coating
composition that is essentially free from volatile organic
compounds, i.e., an amount "less than 0.05% by weight." Although
Zhao discloses that the object of the invention is achieved by
including less than 0.3% by weight of photoinitiator (column 2,
fourth paragraph), appellants contend that when the reference is
read as a whole it does not describe an amount less than 0.05%,
as claimed. Appellants emphasize Zhao's disclosed range of 0.05
to < 3% by weight (column 2, line 54). According to appellants,
since the claimed amount of photoinitiator cannot be considered
to touch or overlap with Zhao's disclosed range, "the subject
matter of appellants' Claim 1 cannot be regarded as being
anticipated by the teaching of Zhao et al." (page 6 of Brief,
first paragraph).
Manifestly, appellants are on sound footing in stating that
Zhao must be considered in its entirety in determining whether a
description of the claimed invention is found therein. It is our
view, however, that when the entirety of Zhao is taken into
consideration, a description of the claimed amount of
photoinitiator is present in the reference. As appreciated by
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