Appeal 2007-2062
Application 10/360,263
partially overlaps with the claimed range is not necessarily sufficient to
anticipate the entire claimed range, but at least there is a presumption of
obviousness. See Atofina, 441 F.3d at 1000, 78 USPQ2d at 1424; In re
Peterson, 315 F.3d 1325, 1329-30, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003);
In re Geisler, 116 F.3d 1465, 1469-70, 43 USPQ2d 1362, 1365 (Fed. Cir.
1997); cf., Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368,
1376, 77 USPQ2d 1321, 1326 (Fed. Cir. 2005); and Atlas Powder Co. v.
IRECO Inc., 190 F.3d 1342, 1346-48, 51 USPQ2d 1943, 1945-47 (Fed. Cir.
1999).
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that a prima facie case of anticipation
and obviousness has been established, which prima facie case has not been
adequately rebutted by Appellants’ arguments. First, we construe the
contested limitation of “less than 100 nm” for the particle size. See Gechter
v. Davidson, supra. We rely on Appellants’ Specification, which is usually
the best guide for determining the scope of any contested limitation. See
Phillips v. AWH Corp., 415 F.3d 1303, 1310, 75 USPQ2d 1321, 1327 (Fed.
Cir. 2005)(en banc). Appellants disclose that any numbers used in the
specification and claims “are to be understood as being modified in all
instances by the term ‘about’” (Specification 4:11-14). Therefore it is clear
that Appellants did not intend to limit the end-points of their ranges to the
exact number. See Jeneric/Pentron Inc. v. Dillon Co., supra. Similarly, the
use of the term “about” in the Schneider patent clearly evinces that patentee
does not limit the range to the exact end-points. See In re Woodruff, supra.
Furthermore, as shown by factual finding (3) listed above, Schneider
contemplates particles with a size less than 0.1 micron (100 nm).
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