Appeal No. 2005-0798
Application No. 10/460,000
range of 0.1-40 microns, and therefore anticipates the claimed
range. Hence, the examiner’s position is essentially that the
particle size range of about 10 microns or less, or the particle
size of less than 5 microns, overlaps the claimed range, and
therefore anticipates the claimed range. Answer, pages 7 and 8.
The issue, therefore, is whether Swei’s disclosed particle
size of 0<x<about 10 microns anticipates a particle size of
between about 0.1 microns to about 40 microns. We agree with
the examiner that it does anticipate the claimed range. In re
Nehrenberg, 280 F.2d 161, 126, 126 USPQ 383 (CCPA 1960). See
alos Ex parte Lee, (31 USPQ2d 1105, BPAI 1993). We particularly
agree with the examiner’s statement made on page 9 of the
answer, that “Swei discloses the same composition with the
particle size of the silica filler being [a, sic] narrower (not
“broader” as indicated by appellants) range than that claimed by
the Appellants and therefore, anticipates the claimed
invention.” See In re Gostelli, 872 F.2d 1008, 1010, 10 USPQ2d
1614, 1616 (Fed. Cir. 1989). Appellants have not presented
arguments directed to the scope of claim 9.
Appellants have presented arguments directed to the scope
of claim 18. We therefore will separately address these
arguments, below.
On page 6 of brief, appellants state that the claimed
invention places emphasis on the criticality of the features of
the shape and size of the silica particles. On pages 7-8 of the
brief, appellants refer to parts of the Swei patent, and argue
that the teachings found therein fail to anticipate the particle
size distribution of appellants’ claimed invention. On page 2
of the reply brief, appellants argue that Swei teaches the need
to limit the particle size to less than 10 microns and
preferably less than 5 microns. Appellants argue that thus it
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