Appeal No. 2005-0374 Page 4
Application No. 09/891,780
claims directed to a process of applying a temperature range of 40 to 60° C to a reaction mixture
which does not require hydrolysis.” (Brief, p. 6).
The fact that Smith performs a hydrolysis step which is not disclosed in Appellants’
specification as being part of their process does not necessarily preclude a finding of
anticipation. The name of the game is the claim. In re Hiniker Co., 150 F.3d 1362, 1369, 47
USPQ2d 1523, 1529 (Fed. Cir. 1998). Where the claim on appeal sweeps in the prior art when
the claim is given its broadest reasonable interpretation and the prior art describes what is
claimed, there is anticipation.
It is reasonable here to interpret claim 1 as encompassing processes with an intervening
step of hydrolysis between the concentrating and reacting steps. Claim 1 is open to the inclusion
of additional steps by virtue of the use of the transitional phrase “comprising.” See In re Baxter,
656 F.2d 679, 686, 210 USPQ 795, 802 (CCPA 1981). Moreover, Appellants do not point to any
particular language in the claim which precludes a step of hydrolysis. Appellants have not
convinced us that the Examiner’s claim interpretation is unreasonable.
With regard to the temperature limitation of the claim, we find that Smith provides a
specific disclosure of an endpoint of about 50° C which is squarely within Appellants’ claimed
range of 40° C to 60° C. The Examiner has established that Smith describes concentrating
distillation bottoms by evaporation of hydrogen fluoride at a temperature of about 50° C and
reacting residue resulting from the concentration and hydrolysis steps with calcium hydroxide or
calcium oxide. The explicit disclosure of the about 50° C endpoint, a value squarely within the
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