Appeal No. 2006-1421
Application No. 10/434,397
The § 102 Rejection
It is the examiner's position that Sample B (i.e., metal
powder with a sol-gel coating of titanium alkoxide stabilized
with diethanolamine) in Comparative Example 1 of Lefebvre
anticipatorily satisfies each of the limitations recited in the
here rejected claims.
According to the appellants, Sample B of Lefebvre is a
comparative nonfunctioning example and therefore cannot
anticipate the claims under review. We agree with the examiner,
however, that Sample B would not be rendered non-anticipatory
even if it were nonfunctioning in the manner argued by the
appellants and that, more importantly, Sample B is expressly
taught by patentee as being a useful, functional embodiment
(e.g., see lines 42-47 in column 7).
The appellants further argue that the diethanolamine
stabilizing agent of Sample B is excluded by the claim 1
language "consisting essentially of." This language renders the
here rejected claims open to unlisted ingredients that do not
materially affect the basic and novel properties of the
invention. PPG Industries Inc. v. Guardian Industries, Corp.,
156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998).
In this regard, we find nothing, and the appellants certainly
-4-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007