Appeal 2006-2835
Application 10/033,496
the meaning of § 102(e) even if the patent claims include within their scope
subject matter which satisfy the claim limitations.
In this latter respect, it is well settled that a generic claim or disclosure
does not provide an anticipatory description of any particular embodiment
encompassed thereby. A determination that a generic disclosure
encompasses embodiments that are identical or substantially identical to
embodiments encompassed by claim, of course, raises issues with respect to
whether the claimed invention would thus have been prima facie obvious to
one of ordinary skill in this art within the meaning of 35 U.S.C. § 103(a).
See generally, Best, 562 F.2d at 1254-56, 195 USPQ at 433-34; Skoner, 517
F.2d at, 950-51, 186 USPQ at 82-83.
Even assuming, arguendo, that the Examiner has established a prima
facie case of anticipation over an embodiment disclosed by Dontula ‘976,
such as the Dontula ‘976 Examples that we discussed above, Appellants’
arguments in rebuttal with respect to the difference between the properties of
modulus and toughness and the difference between the properties of
toughness and stiffness has shifted the burden to the Examiner to again
establish a prima facie case of anticipation in order to maintain the rejection.
See generally, Spada, 911 F.2d at 707 n.3, 15 USPQ2d at 1657 n.3. The
Examiner has not carried this burden. Indeed, the Examiner admits that
there is no correlation between toughness and modulus properties, and has
not addressed Appellants’ position that there is no correlation between
toughness and stiffness properties.
Our considerations with respect to the ground of rejection over
Dontula ‘656 result in the same analysis.
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