Appeal 2007-2850
Application 10/155,015
different abrasives of crystalline form such as crystalline silica and alpha-
alumina trihydrate. (Answer 5-6). Appellants concede that Baines
discloses a mixture of more than one abrasive material, but maintain that
“[a] mixture of materials does not constitute a mixed-crystal.” (Br. 10).
Thus, the issue of whether the Examiner has established a prima facie
showing of obviousness turns on whether the term “mixed-crystal” as used
in the claims patentably distinguishes over a mixture of two crystalline
forms. For the reasons discussed below, we find that the claims patentably
define over the applied prior art. Accordingly, we reverse both grounds of
rejection.
ANALYSIS AND CONCLUSIONS
According to Appellants, the term “mixed-crystal” is a term of art
which would be understood by one of ordinary skill in the art as “a solid
solution, i.e., a crystal containing a second constituent which fits into and is
distributed in the lattice of a crystal.” (Reply Br. 6). Appellants additionally
rely on language in the Specification and original claim 2 in support of their
interpretation of “mixed-crystal.” (Br. 10). The Examiner responds to
Appellants’ argument by asserting that “Appellant’s specification does not
set forth any definition that would exclude the examiner’s broad
interpretation of ‘mixed-crystal’ as applied to the teaching of Baines.”
(Answer 5).
While the Examiner is certainly correct in stating that claims are
construed broadly during prosecution, the Examiner’s claim interpretation
must still be reasonable. Thus, proper claim construction requires
consideration of the Specification as it would be interpreted by one of
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