Appeal 2007-0907
Application 10/159,367
recitation “having low or zero volatile organic compounds.” It is true that
Gosselink’s composition includes from about 2% to about 10% ethanol
(Gosselink, col. 16, ll. 9-16). Nevertheless, the Examiner has reasonably
determined that the lower ethanol amount of Gosselink’s range would be
encompassed by the claim 1 language “having low . . . volatile organic
compounds” (Answer 5). Under these circumstances, it is appropriate to
require Appellants to prove that Gosselink’s composition with the lowest
disclosed ethanol concentration does not actually possess the claim 1
characteristic of low volatile organic compounds since the Patent and
Trademark Office is not able to manufacture products or to obtain and
compare prior art products. See In re Best, 562 F.2d 1252, 1255, 195 USPQ
430, 433-34 (CCPA 1977).
For the reasons set forth above and in the Answer, we share the
Examiner’s finding that claim 1 is anticipated by Gosselink. The only other
claims mentioned by Appellants in their arguments concerning this rejection
are claims 20 and 23 (Appeal Br. 11). However, claim 20 is not included in
this rejection, and Appellants have not identified with any reasonable
specificity any alleged novelty in claim 23 beyond those discussed above
with respect to claim 1. It follows that we hereby sustain the § 102 rejection
of claims 1-10, 12, 17-19, and 23 as being anticipated by Gosselink.
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