Ex Parte Hayes - Page 6

                 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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