Appeal 2006-0990
Application 10/209,369
compounds. We note that Warzelhan does not expressly disclose a
concentration range for ethylene glycol, 1,4-butanediol, and mixtures
thereof, the preferred dihydroxy compounds (a21) (Warzelhan, col. 3, ll. 56-
65). Viewing the Examiner’s rejection in a light most favorable to the
Examiner and assuming that the most preferred concentration range
described by Warzelhan for the dihydroxy (a21) component describes the
concentration for the preferred ethylene glycol, 1,4-butanediol, and mixtures
thereof, that concentration is still only somewhat overlapping with the
claimed range of the first glycol (ethylene glycol, 1,3-propanediol, and 1,4-
butanediol) claimed.
According to the Examiner, “the biodegradable polymer of the present
invention flows clearly and naturally from the teachings in the disclosure of
the prior art of Warzelhan ‘045. In view of Ex parte Lee, 31 USPQ2d 1105
end points of the range disclosed in the prior art constitute a valid data point
and the prior art applied anticipates the claim.” (Answer 6-7).
As a first matter, the question is not whether “the biodegradable
polymer of the present invention flows clearly and naturally from the
teachings in the disclosure of the prior art of Warzelhan ‘045.” The question
is whether the prior art describes the claimed subject matter, or something
falling within the claim, with sufficient specificity to anticipate the claim.
Atofina, 441 F.3d at 1000, 78 USPQ2d at 1424.
There is no question that Warzelhan would anticipate if the reference
contained a working example of a polymer with the claimed components in
concentrations within the claimed ranges. See Titanium Metals Corp. of Am.
v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 779 (Fed. Cir. 1985)
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