Appeal 2006-2835
Application 10/033,496
ordinary skill in the art in possession thereof. See In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). All that is required to
establish anticipation of a product claim is the disclosure in a reference of a
single embodiment falling within the claim. See e.g., Titanium Metals Corp.
v. Banner, 778 F.2d 775, 781, 227 USPQ 773, 778 (Fed. Cir. 1985); In re
Gosteli, 872 F.2d 1008, 1010, 10 USPQ2d 1614, 1616 (Fed. Cir. 1989).
The Examiner can reach the conclusion that, prima facie, an imaging
member product embodiment disclosed in Dontula ‘976 falls within
appealed claim 18 even though the reference is silent with respect to the
claim limitations with respect to toughness, by pointing to evidence in the
record establishing that it reasonably appears that an embodiment of the
reference is identical to the claimed imaging members encompassed by the
appealed claim. If the Examiner so establishes a prima facie case of
anticipation, the burden shifts to Appellants to submit effective argument
and/or objective evidence to patentably distinguish the claimed imaging
members over the reference. See generally, Spada, 911 F.2d at 708-09,
15 USPQ2d at 1657-58 (“The Board held that the compositions claimed by
Spada ‘appear to be identical’ to those described by Smith. While Spada
criticizes the usage of the word ‘appear,’ we think that it was reasonable for
the PTO to infer that the polymerization by both Smith and Spada of
identical monomers, employing the same or similar polymerization
techniques, would produce polymers having the identical composition.”);
In re Best, 562 F.2d 1252, 1254-56, 195 USPQ 430, 432-34 (C.C.P.A. 1977)
(“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
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