Appeal No. 2006-2811 Page 9
Application No. 09/973,646
the only specific compositions which use styrene-containing resins as impact modifiers.
However, Examples 3, 9 and 11 [sic, 10] only contain 80 wt.% tungsten powder and
Example 4 contains 81 wt.% tungsten powder. Since the currently presented claims
require a minimum of 85 wt.% tungsten powder, Gallucci et al clearly does not
anticipate the presently claimed invention.” Id.
For the reasons stated by Appellants, we conclude that the examiner has not set
forth a prima facie case that Gallucci describes a composition in which the optional
impact modifier is included, the impact modifier is a styrene-based thermoplastic
elastomer, the styrene-based thermoplastic elastomer is included in an amount of 2.5 to
15 wt.%, and tungsten powder is included in an amount of from 85 to 97.5 wt.%. See
Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997)
(“Under 35 U.S.C. § 102, every limitation of a claim must identically appear in a single
prior art reference for it to anticipate the claim.”). We therefore reverse the rejection of
claims 1, 4-7, 16-19, 22, and 23 under 35 U.S.C. § 102(e) over Gallucci.
4. Obviousness
The examiner has rejected claims 3 and 12 under 35 U.S.C. § 103 as obvious
over Gallucci in view of Sakaki. We have already concluded that Sakaki cannot be
applied as prior art against the present claims and that Appellants have antedated
Gallucci with respect to claims 3 and 12. We therefore reverse the obviousness
rejection of these claims.
The examiner has also rejected claims 16-19 under 35 U.S.C. § 103 as obvious
over Sakaki in view of Gallucci. We have already concluded that Sakaki cannot be
applied as prior art against the present claims and that Gallucci does not anticipate
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