Appeal 2007-0501
Application 10/747,956
fluoride, that is, hydrofluoric acid, to which potassium fluoride/hydrofluoric
acid is added to obtain potassium fluorozincate (Seseke-Koyro ‘221 col. 6,
ll. 34-41). We recognize this disclosure does not state the grain spectrum of
the particles obtained. However, the method illustrated in reference
Example 1 uses the same ingredients in the same steps as claimed, and thus
there is no evidence in the record which establishes that a different result
would obtain by following the method of Example 1. See In re Sussman,
141 F.2d 267, 269-70, 60 USPQ 538, 541 (CCPA 1944) (“[I]f appellant
obtains a new product through reaction of the elements mentioned, it must
be due to some step in the process not included in the claim.”).
The Examiner should determine whether this disclosure in Seseke-
Koyro ‘641 renders appealed claim 12 anticipated under 35 U.S.C. § 102(b)
or, in the alternative, obvious under 35 U.S.C. § 103(a). See, e.g., In re
Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990);
Best, 562 F.2d at 1254-56, 195 USPQ at 433-34; In re Skoner, 517 F.2d 947,
950-51, 186 USPQ 80, 82-83 (CCPA 1975) (“Appellants have chosen to
describe their invention in terms of certain physical characteristics . . . .
Merely choosing to describe their invention in this manner does not render
patentable their method which is clearly obvious in view of [the reference].”
(citation omitted)).
We further find the paragraph bridging pages 9-10 and Examples 2-7
of Seseke-Koyro ‘641 as shown by Seseke-Koyro ‘221 (Seseke-Koyro ‘221,
e.g., col. 5, ll. 42-58, and cols. 6-8), would have disclosed methods of
reacting ingredients and obtaining those ingredients which would result in
potassium fluorozincate.
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