Appeal 2006-1781
Application 10/230,015
As evident by a review of the Briefs and the Answer, issues of
overlapping ranges appear to be involved in at least several of the four
anticipation rejections maintained by the Examiner. See, for example, the
paragraph bridging pages 4 and 5 and page 8 of the Answer and the
Amended Brief at pages 10-12.
On December 20, 2005, the case of Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 77 USPQ2d 1321 (Fed. Cir. 2005)
was decided. Thereafter, Atofina v. Great Lakes Chem. Corp. 441 F.3d 991
78 USPQ2d 1417 (Fed. Cir. 2006) was decided. In those cases, our
reviewing court addressed anticipation issues that appear to involve applied
prior art that disclosed a component that is used in a process, in terms of
ranges, as in Perricone, or a reactant and a process condition in terms of
ranges, as in Atofina, as applied to claims that included corresponding
narrower and/or overlapping range limitations for those items.1
Neither the Examiner nor the Appellants address the recent holdings
in the Perricione and/or Atofina decisions with regard to the issues in the
anticipation rejections advanced by the Examiner in this appeal. In this
regard, Atofina was decided after the Certificate of Mailing date (March 20,
2006) associated with Appellants’ Reply Brief.
Consequently, we remand this application to the Examiner to review
those anticipation rejections in light of the recent Perricone and Atofina
decisions. The Examiner should submit a Supplemental Examiner’s Answer
explaining how the respective holdings of our reviewing court in each of
those cases (especially Atofina) can be regarded as being consistent with
1 Also, see Section 2131.03 of the most recent edition (Rev. 5, Aug., 2006)
of the Manual of Patent Examining Procedure.
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