Appeal No. 2005-1459
Application No. 09/950,612
The examiner states that claim 5 is “indefinite” since it is
unclear how a slurry can contain silica when this abrasive has
not been recited in base claim 1 on appeal (Answer, pages 3-4).
As correctly argued by appellants, the examiner’s rejection would
have merit if claim 1 did not recite silica (Brief, page 7; Reply
Brief, page 2). However, claim 1 in this application does recite
silica, although claim 1 as reproduced in the Appendix to the
Brief mistakenly omits “silica.”2 Accordingly, on the record in
this application, we determine that the word “silica” in claim
5 finds antecedent basis in independent claim 1 on appeal.
For the foregoing reasons and those stated in the Brief and
Reply Brief, we reverse the examiner’s rejection of claims 1, 2
and 5 under 35 U.S.C. § 112, second paragraph.
B. The Rejection based on Section 102(b)
The examiner finds that Robinson discloses an abrasive
slurry where the slurry contains at least one of ceria, silica,
alumina, titania and zirconia (Answer, page 4). The examiner
finds that Robinson’s use of “at least one” encompasses the
2Appellants’ reproduction of the claims on appeal also
contains two typographical errors in claim 6 on appeal
(“inorganic metal oxide” is listed twice and “eight” should read
as “weight”). We note that the examiner has stated that the copy
of the appealed claims contained in the Appendix to the Brief is
correct (Answer, page 2, paragraph (8)).
5
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