Appeal 2007-1855
Application 10/815,650
103(a) constitutes an improper use of that disclosure. A reasonable
interpretation of the claimed toner composition encompassed by claim 1 in
light of the Specification entails determination of the full breadth of the
ingredients of the claimed product as well as the properties thereof as
established in the disclosure. The properties of the toner compositions
include the properties of the image imparted to a suitable substrate as
disclosed in the Specification.
On this record, we find no basis for Appellants’ contentions that
Machida does not enable the claimed invention simply because it does not
define the particle size of the activated carbon in the same terms used by
Appellants, and thus further does not constitute an “inherent anticipation” of
the claimed toner composition. It is well settled that the description of a
claimed product in different terms or properties not employed by the prior
art to describe a product does not establish patentability where the claimed
product reasonably appears to be identical or substantially identical to the
reference product absent argument or evidence patentably distinguishing the
claimed product from the prior art product. See, e.g., Best, 562 F.2d at 1256,
195 USPQ at 434 (two of six specified parameters for claimed product also
disclosed for prior art product requiring “comparison of those other [four]
parameters with the corresponding parameters” of the prior art product to
establish patentability); Skoner, 517 F.2d at 950-51, 186 USPQ at 82-83
(extent of abrasion of surface claimed in different terms than used to
describe surface abrasion in reference “considered inherently the same as” in
the reference and does not result in “allowance of claims drawn to
unpatentable subject matter merely through the employment of descriptive
language not chosen by the prior art”).
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