There is no requirement that the prior art disclose actual performance of an otherwise anticipatory embodiment among various contemplated embodiments in order to establish a prima facie case of anticipation. Here, for example, the prior art’s disclosure of 15 combinations, of which one included the claimed ruthenium binder and PVD coating combination, was found to be sufficient to establish anticipation even though there was no evidence in the prior art of actually making such a combination per se. This would be a good case to consult when faced with a rejection based on one combination out of numerous combinations of elements purportedly contemplated by the prior art.
Background / Facts: The patent on appeal here from rejection at the PTO as part of an inter partes reexamination is directed to cutting tools containing ruthenium as a binder that are coated using physical vapor deposition (“PVD”). The prior art recites as part of its claims a binder consisting of one of five metals, one of which is ruthenium, together with a coating. Three coating methods are “contemplated” in its specification, one of which is PVD. Thus, the prior art purports to cover 15 combinations, of which one includes a ruthenium binder and PVD coating combination, although no specific examples are given in the specification of such combination per se.
Issue(s): Whether the “number of categories and components” disclosed in the cited art is so large that the combination of ruthenium and PVD coatings “would not be immediately apparent to one of ordinary skill in the art.”
Holding(s): No. “The fact that a skilled artisan had various ways of formulating a coated cutting insert based on [the prior art’s] teaching does not help [the patentee], since many of these are within the scope of its claim. [] At the very least, [the prior art’s] express ‘contemplat[ion]’ of PVD coatings is sufficient evidence that a reasonable mind could find that a person of skill in the art, reading [the prior art’s] claim 5, would immediately envisage applying a PVD coating. [] Thus, substantial evidence supports the Board’s conclusion that [the prior art] effectively teaches 15 combinations, of which one anticipates pending claim 1. Though it is true that there is no evidence in [the prior art] of ‘actual performance’ of combining the ruthenium binder and PVD coatings, this is not required.”