Appeal 2007-1945
Application 10/669,215
3. Would Allen and Hilbert have rendered the claimed
thermoplastic composition obvious within the meaning of 35 U.S.C. § 103?
FACTS, PRINCIPLES OF LAW, AND ANALYSES
1. ANTICIPATION
Under 35 U.S.C. § 102, to establish anticipation, a single prior art
reference must describe, either expressly or under the principles of
inherency, each and every element of a claimed invention. See, e.g., In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). The
prior art reference must describe the claimed invention with sufficient
specificity to allow one skilled in the art to readily envisage the claimed
invention from the prior art reference. In re Schaumann, 572 F.2d 312, 315,
197 USPQ 5, 8 (CCPA 1978).
The claimed subject mater is directed to a thermal plastic composition
comprising a blend of a polyester and a polycarbonate (e.g., claim 1). The
composition is further defined by a process limitation which limits the
amount of a titanium-containing catalyst used in producing the polyester to 1
to about 30 ppm elemental titanium (id). However, by virtue of using the
transitional language “comprising” in claim 1, the claimed thermal plastic
composition may contain additional titanium (in the form of a titanium-
containing catalyst) and other additives, which are not recited. In re Baxter,
656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981)(“As long as
one of the monomers in the reaction is propylene, any other monomer may
be present, because the term ‘comprise’ permits the inclusion of other steps,
elements, or materials.”).
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