Appeal 2006-3082
Application 10/372,669
773, 778 (Fed. Cir. 1985). See also In re Petering, 301 F.2d 676, 682, 133
USPQ 275, 280 (CCPA 1962) (a compound described in a reference, and a
generic claim including that compound, are unpatentable under 35 U.S.C.
§102(b)); In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA
1960) (a generic claim can not be allowed if the prior art describes a species
within the claimed genus).” Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d
1375, 1376 (Fed. Cir. 2001)). Appellants have not provided sufficient
evidence to rebut the case of prima facie anticipation because there are other
examples disclosed in Horino which fall within the scope of claim 23 and
which we have reasonably presumed anticipate it.
In regard to the evidence presented by Appellants, we note certain
flaws in it which preclude us from determining whether any scope of claim 2
has been distinguished over Horino.
Evidence in the Specification is provided that Horino’s coated powder
had a dynamic frictional coefficient of 3.35x10-1, “while that of the inventive
product is 2.94x10-1” (Spec. 43). The Examiner objected: “looking at the
dynamic frictional coefficient values closely, there is no significant
differen[ce] between the claimed product and that of Horino, because the
values are very close and do not appear to indicate patentable differences.
The specification does not indicate statistical evaluation of the results to
determine whether differences between the values are at least statistically
significant” (Answer 5).
3 There is also no attempt to show that the results obtained for the Ex. 1
composite powder are representative of the results for other embodiments
within its scope. Unexpected results must be “commensurate in scope with
the degree of protection sought by the claimed subject matter.” In re Harris,
409 F.3d 1339, 1344, 74 USPQ2d 1951, 1955 (Fed. Cir. 2005).
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