Appeal 2006-2968
Application 10/039,481
of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1405
(Fed. Cir. 1997)). “It is a truism that a claim need not be limited to a
preferred embodiment. However, in a given case, the scope of the right to
exclude may be limited by a narrow disclosure.” Id. Each case turns on its
own facts. In re Smythe, 480 F.2d at 1382, 178 USPQ at 284.
With regard to claim 33, the Examiner satisfies the initial burden by
pointing out that claim 33 introduces a new concept not present in the
Specification, namely the concept that the pigment polymer particles can
have chargeability suitable for some imaging processes, but be unsuitable for
others. While the Specification does discuss using pigment particles with
weak chargeability, it defines such particles as those that “although the
skilled person would be aware that a weak charge could be imparted to the
particles it would be apparent that this property would be of little or no
utility so far as practical applications in electrostatic imaging were
concerned.” This suggests that the weak chargeability is unsuitable for any
imaging application, not just for a given application. The introduction of a
new concept indicates that there is no support for the claim language. See
In re Anderson, 471 F.2d 1237, 1244, 176 USPQ 331, 336 (CCPA
1973)(“The question, as we view it, it not whether ‘carrying’ was a word
used in the specification as filed but whether there is support in the
specification for employment of the term in a claim; is the concept of
carrying present in the original disclosure?”). This analysis satisfies the
Examiner’s burden thus shifting the burden to Appellant.
Appellant argues that claim 33 defines the pigment particles as being
unusable in a given process since they do not charge enough and states that
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