Appeal 2006-2468
Application 10/149,875
Cir. 1999) (determining that a prior art disclosure of, e.g., “33-80%” or “50-
70%” constitutes a description of “60-90%” for a component of a claimed
composition).
We note that the holding in Atofina was based on a significantly
different record than the record before us in this appeal. In Atofina, 441 F.3d
at 999, 78 U.S.P.Q.2d at 1423-24, the U.S. Court of Appeals for the Federal
Circuit reversed an anticipation determination of a district court (United
States District Court for the District of Delaware) because of a
misapplication of Titanium Metals Corp. v. Banner, 778 F.2d 775, 782,
227 U.S.P.Q. 773, 779 (Fed. Cir. 1985). In reversing, the court held that
“Titanium Metals stands for the proposition that an earlier species reference
anticipates a later genus claim, not that an earlier genus anticipates narrower
species.” Atofina, 441 F.3d at 999, 78 U.S.P.Q.2d at 1424. However, the
court, in Atofina, 441 F.3d at 999, 78 U.S.P.Q.2d at 1423, made it clear that
a small genus can anticipate a species of that genus, even where the
anticipated species is not mentioned in the anticipating reference and the
court referenced several earlier decisions consonant with this proposition (In
re Petering, 301 F.2d at 682, 133 U.S.P.Q. at 281 (CCPA 1962) and Bristol-
Meyers Squibb, Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1380,
58 U.S.P.Q.2d 1508).
While the court made several observations about slightly overlapping
or subsumed ranges and range endpoints in Atofina, 441 F.3d at 999-1000,
78 U.S.P.Q.2d at 1424, it must be kept in mind that those observations were
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