Anticipation by a prior art range
As to anticipation in the matter of ranges, Ex parte Haese notes:
When the prior art discloses a range that overlaps a specified range, but no specific examples falling within the specified range are disclosed, a fact-dependent question arises as to whether the reference describes the claimed subject matter “with sufficient specificity to anticipate” the claim. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006) (holding that a reference’s temperature range of 100-500 degrees C did not describe the specified range of 330-450 degrees C with sufficient specificity to anticipate the claim); see MPEP § 2131.03 (Part II). In our opinion, the Examiner fails as a matter of fact to identify an anticipatory embodiment in Kauth, or to adequately explain why Kauth’s general disclosure of phosgene molar excess ranges (“12 to 22 %” and “14 to 20 %”) describes the specified range (“8 to 17 mol%) with sufficient specificity to anticipate claim 6.
There was a concurring opinion:
It is well settled that, during examination, product-by-process claims are rejected properly over prior art that discloses products, no matter how made, that are the same or substantially the same as the product claimed. See, e.g., In re Brown, 459 F.2d 531, 535 (CCPA 1972) (“when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable.”) As the court explained, “the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” Id.