Appeal 2006-2352
Application 10/065,436
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004). In
assessing a broadest reasonable claim construction wherein a potentially
exclusionary “consisting essentially of” transistional phrase is involved, it is
appropriate that Appellants bear the burden of: (1) showing the basic and
novel characteristics of their claimed invention, and (2) establishing how
those characteristics would be materially changed by any allegedly excluded
component of an applied reference. See In re DeLajarte, 337 F.2d 870,
873-74, 143 USPQ 256, 258 (CCPA 1964); Ex parte Hoffman, 12 USPQ2d
1061, 1063-64 (BPAI 1989).
Anticipation does not require that the reference teach what the
Appellants teach in their Specification, but only that the claims on appeal
"read on" something disclosed in the reference. See Kalman v. Kimberly
Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983).
Anticipation is a factual determination. See In re Baxter Travenol Labs.,
952 F.2d 388, 390, 21 USPQ2d 1281, 1283 (Fed. Cir. 1991) (citing In re
Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990).
When a claimed product appears to be substantially identical to a
product disclosed by the prior art, the burden is on the Applicants to prove
that the product of the prior art does not necessarily or inherently possess
characteristics or properties attributed to the claimed product. In re Spada,
911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Under such
circumstances, a rejection may be properly made under 35 U.S.C. § 102 or
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