Appeal No. 2006-2982 Page 9
Application No. 10/458,112
to achieve a complete exploration of the applicant's invention and its relation
to the prior art.” In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989) (internal citation omitted). Our reviewing court has further
determined: “the specification is the ‘single best guide to the meaning of a
disputed term’ and that the specification ‘acts as a dictionary when it
expressly defines terms used in the claims or when it defines terms by
implication.’ ” Phillips v. AWH Corp., 415 F.3d 1303, 1321, 75 USPQ2d
1321, 1332 (Fed. Cir. 2005) (en banc) (internal citations omitted).
In the instant case, we note that Rizzo’s disclosed particle size range
(i.e., “approximately 1 µm or less”, ¶ 0053 ) completely encompasses the
particle size range defined and argued by appellants of between about 3
nanometers to about 12 nanometers. We note that Rizzo’s disclosure of a
completely encompassing range would be sufficient to sustain an
obviousness rejection.1 However, we note that our reviewing court has
determined that a completely encompassing range that lacks sufficient
specificity is insufficient to sustain an anticipation rejection. See Atofina v.
Great Lakes Chemical Corp., 441 F.3d 991, 999, 78 USPQ2d 1417,
1423 (Fed. Cir. 2006) (“Here, the prior art, JP 51-82250, discloses a
temperature range of 100 to 500 °C which is broader than and fully
1 Where the claimed ranges are completely encompassed by the prior art, the conclusion
that the claims are prima facie obvious is even more compelling than in cases of mere
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