Appeal 2006-3082
Application 10/372,669
corresponds to the claimed “spherically shaped particles” and the
honeycombed structure (id.) corresponds to the claimed “mesh-like
formation of string particles.”
ANALYSIS
The rejection at issue in this appeal is under 35 U.S.C. § 103(a). The
Examiner contends that the claimed subject matter would have been obvious
in view of the composition described in Horino (Answer 3-4). With respect
to independent claim 2, the only apparent difference between Horino’s
coated powder and the claimed composite powder is that the latter is
characterized in the claim as comprising “a formation of spherically shaped
particles and mesh-like formation of string particles.” In our opinion,
Horino’s coated composition possesses this characteristic (Findings of Fact
(“FF”) 11-13). Thus, the rejection of claim 2 is more properly framed as
anticipation under 35 U.S.C. § 102(b) and we address it below as such.
However, dependent claim 3-24 recite additional limitations that the
Examiner contends are obvious over Horino’s teachings (e.g., “[o]ne skilled
in the art would expect to manipulate amounts . . . in order to achieve the
most optimal composition”) (Answer 4), but these claims were not
separately argued in this proceeding, and thus stand or fall with claim 2.
Because anticipation is the epitome of obviousness, and the facts relied upon
are the same, regardless of whether the rejection is characterized as under §
103 or § 102, we shall affirm the rejection under 35 U.S.C. § 103, but
designate it as a new grounds of rejection under 37 C.F.R. § 41.50(b) in
order to provide Appellants with the opportunity to respond to it. See In re
Meyer, 599 F.2d 1026, 1029-1030, 202 USPQ 175, 178 (Fed. Cir. 1979).
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