Appeal No. 2005-1439
Application No. 09/943,987
silver, cobalt and copper recited in claim 1, Diamond does not anticipate claim 1.2 See
Minnesota Mining and Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559,
1572, 24 USPQ2d 1321, 1332 (Fed. Cir. 1992) (to anticipate, a reference must sufficiently
describe the claimed invention to have placed the public in possession of it).
The rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by Diamond is
reversed. Since the patentability of claims 2-6 and 8-12 stands or falls with the patentability of
claim 1, the rejection of claims 2-6 and 8-12 under 35 U.S.C. § 102(b) as being anticipated by
Diamond is also reversed.
B. Rejection of claim 7 under 35 U.S.C. § 102(b)
Claim 7 is dependent on claim 1. See 37 CFR § 1.75(c) (2004) (“Claims in dependent
form shall be construed to include all the limitations of the claim incorporated by reference into
the dependent claim.”). Therefore, the rejection of claim 7 under 35 U.S.C. § 102(b) as being
anticipated by Diamond is reversed.
C. Rejection of claims 1-6 and 8-12 under 35 U.S.C. § 103(a)
The examiner also relies on the gold alloy recited in claim 5 of Diamond to establish
that Diamond renders obvious the appellant's claimed 22 karat gold alloy. See Answer, pp. 3-4.
2The gold alloy recited in claim 1 also comprises "optionally boron up to 0.5%." Thus,
boron is not a required element in the claimed alloy. See also Brief, p. 2 (recognizing that
"boron is optional").
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