Appeal No. 2006-0868
Application No. 10/005,846
to address the more important issue of whether Kondo’s teaching of an
elastomer amount of “no more than 30%” anticipates and/or makes obvious
Appellants’ aforementioned claimed ranges. In so doing, it is necessary that
the Examiner review the cases of Atofina v. Great Lakes Chemical Corp.,
441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006); Perricone v.
Medicis Pharmeceutical Corp., 432 F.3d 1368, 1372, 77 USPQ 2d 1321,
1326 (Fed. Cir. 2005); Titanium Metals Corp. of Am. v. Banner, 778 F.2d
775, 780, 227 USPQ 773, 777 (Fed. Cir. 1985) (“[A]nticipation under § 102
can be found only when the reference discloses exactly what is claimed and
that where there are differences between the reference disclosure and the
claim, the rejection must be based on § 103 which takes differences into
account. D Chisum, Patents § 3.02.”); In re Malagari, 499 F.2d 1297, 1303,
182 USPQ 549, 552 (CCPA 1974); and In re Reven, 390 F.2d 997, 1001,
156 USPQ 679, 681 (C.C.P.A. 1968).
In summary, the instant application is remanded to the Examiner to
consider the aforementioned issues and to act accordingly. This remand to the
Examiner pursuant to 37 C.F.R. § 41.50(a)(1) is made for further consideration
of a rejection. Accordingly, 37 C.F.R. § 41.50(a)(2) applies if a Supplemental
Examiner's Answer is written in response to this remand by the Board.
REMAND
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