Appeal 2006-3082
Application 10/372,669
We do not find this evidence persuasive. Foremost, the evidence is
based on only one comparison between a single embodiment (Ex. 1) of
claim 2 – titanium mica coated with aluminum hydroxide (Spec. 42) – with
just one example from Horino of muscovite coated with aluminum
hydroxide. Claim 2, however, is not limited to the particular materials nor
the specific process utilized in Ex. 1 of the Specification on which the
comparison is based. Rather claim 2 is broader, covering “aluminum
hydroxide adhered to at least a portion of the surface of said [powdery]
base” produced by any process. Appellants have not attempted to show that
other examples described in Horino – for example, comprising talc,
magnesium silicate, or a mica as the powdery base (FF 2) – do not anticipate
the broadly claimed composite powder of claim 2.2 Thus, although
Appellants contend that their evidence establishes a difference between the
claimed invention and Horino, at most, if the evidence establishes what
Appellants purport it does, it would only be sufficient to prove that Ex. 1
differs from Comp. Ex. 1 of Horino.
A claim is unpatentable if any scope of it is anticipated. (“When a
claim covers several structures or compositions, either generically or as
alternatives, the claim is deemed anticipated if any of the structures or
compositions within the scope of the claim is known in the prior art.
Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 782, 227 USPQ
2 Appellants assert that the “present invention” is “markedly superior” in six
of nine categories assessed (Reply Br. 2). Only one embodiment of the claim
is asserted to be different from Horino, but the claim scope is broader.
Appellants have not provided rebuttal evidence to establish that Horino’s
other examples do not anticipate claim 2.
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