Appeal 2006-0990
Application 10/209,369
(Disclosure of a discrete embodiment of an alloy composition with metal
concentrations within the claimed ranges anticipated the claim);
In re Gosteli, 872 F.2d 1008, 1010, 10 U.S.P.Q.2d 1614, 1616 (Fed. Cir.
1989) (“Section 102(e) bars the issuance of a patent if its generic claims are
anticipated by prior art disclosing individual chemical species.”);
In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (C.C.P.A. 1960) (“It is
well settled that a generic claim cannot be allowed to an applicant if the
prior art discloses a species falling within the claimed genus.”). The
Examiner, however, makes no finding that Warzelhan describes such a
working example. Rather, the Examiner relies upon the broader disclosure
in Warzelhan of a polymer having components of concentration
encompassing or overlapping the claimed ranges.
There is also no question that if Warzelhan described a
copolyetherester containing each of the claimed components in ranges
entirely encompassing the claimed ranges and not significantly deviating
therefrom there might, under some circumstances, be anticipation. See
Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1377,
77 USPQ2d 1321, 1327 (Fed. Cir. 2005) (Claimed “effective amount” of
ascorbyl palmitate found to be anticipated by prior art describing 0.01-20%
based on disclosures in other claims of “up to 10%,” “from about 0.025% to
about 5%,” and “from about 0.025% to about 10%” that evinced the
“effective amount”). However, in the present case, even the most preferred
ranges of Warzelhan for the glycol components (70-99.5 mol% and 0.5-30
mol%) are broader by a considerable margin than the claimed ranges and do
not entirely encompass the claimed ranges (91.0-99.9 mol% and 0.1-4
mol%).
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