Appeal 2007-2234
Application 09/950,477
diethylene glycol, showed the best cleanability, consistent with Miranda's
disclosure that alcohol is added to enhance cleanability (Miranda 16:13-21).
However, what both the Appellants and the Examiner appear to have
overlooked is that the claimed invention does not require a latex-free
composition, but rather a substantially latex-free composition (see claims 1,
11 and 21). As defined in Appellants' Specification, a substantially latex
free composition may contain trace amounts of latex, which may be up to
about 1000 ppm (Specification, 2:18-21). Miranda not only describes an
embodiment wherein the amount of latex in its composition is from 1 to
50%, but also that its compositions may be diluted, e.g., with from 1 to 20
parts of water (Miranda, 11:8-11 and 13:25-26). An aqueous composition
containing 1% latex diluted with 20 parts of water results in a latex
concentration of 500 ppm. We also note that the formulations in Example 1
of Miranda were all diluted for use. Thus, Miranda fairly describes a
substantially latex-free antiskid composition as that term is used in
Appellants' claims. Moreover, Miranda expressly directs the attention of a
skilled artisan to aluminate-modified silicas as described by Iler, which
Miranda incorporates by reference into its disclosures (Miranda, 9:16-20).
As explained by Iler, the increased stability provided by modifying silica
particles with aluminate broadens the scope of its practical uses (Iler, 408).
Miranda's descriptions of particular embodiments that do not
anticipate claim 11 or other claims do not detract from its suggestion of
embodiments that meet those claims. See, e.g., In re Burckel, 592 F.2d
1175, 1179, 201 USPQ 67, 70 (CCPA 1979) (a prior art disclosure is not
limited to its preferred embodiments or specific working examples); In re
Mills, 470 F.2d 649, 651, 176 USPQ 196, 198 (CCPA 1972) (all the
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