Appeal No. 2006-2660
Application 10/007,021
of’ for purposes of its patent by making clear in its specification what it regarded as constituting
a material change in the basic and novel characteristics of the invention. The question for our
decision is whether PPG did so.”); In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463
(CCPA 1976) (“[I]t is necessary and proper to determine whether [the] specification reasonably
supports a construction” that would exclude or include particular ingredients.). The transitional
term “comprising” opens claim 32 to encompass articles containing additional layers, such as
between the substrate and the nickel layer, and several different nickel layers based on brightener
additives. See generally, Exxon Chem. Pats., Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555,
35 USPQ2d 1801, 1802 (Fed. Cir. 1995) (“The claimed composition is defined as comprising -
meaning containing at least - five specific ingredients.”); In re Baxter, 656 F.2d 679, 686-87,
210 USPQ 795, 802-03 (CCPA 1981) (“As long as one of the monomers in the reaction is
propylene, any other monomer may be present, because the term ‘comprises’ permits the
inclusion of other steps, elements, or materials.”).
It is well settled that the examiner has the burden of establishing a prima facie case of
anticipation under § 102(e) in the first instance by pointing out where each and every element of
the claimed invention, arranged as required by the claim, is described identically in a single
reference, either expressly or under the principles of inherency, in a manner sufficient to have
placed a person of ordinary skill in the art in possession thereof. See generally, Spada, 911 F.2d
at 708, 15 USPQ2d at 1657. It is further well settled that if a reference does not disclose a
specific embodiment which satisfies all of the claim limitations, the reference will nonetheless
describe the claimed invention within the meaning of § 102 if it “clearly and unequivocally . . .
[directs] those skilled in the art to [the claimed invention] without any need for picking,
choosing, and combining various disclosures not directly related to each other by the teachings
of the cited reference.” In re Arkley, 455 F.2d 586, 587, 172 USPQ 524, 526 (CCPA 1972).
Whether a reference provides clear and unequivocal direction to the claimed invention is
determined on the total circumstances with respect to the disclosure of the reference, see In re
Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962), including “not only specific
teachings of the reference but also the inferences which one skilled in the art would reasonably
be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA
1968); see also In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir. 1995), and
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