Appeal No. 95-4682
Application 08/107,536
claim 11 under 35 U.S.C. ' 103 as being unpatentable over Evani or Kent et al.
It is well settled that in making out a prima facie case of anticipation, each and every
element of the claimed invention, arranged as required by the claims, must be found in a single
prior art reference, either expressly or under the principles of inherency. See generally In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986); Lindemann Maschinenfabrik
v. American Hoist and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). It is
also well settled that in order to establish a prima facie case of obviousness, A[b]oth the
suggestion and the reasonable expectation of success must be found in the prior art and not in
applicant=s disclosure.@ In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991). Thus, a prima facie case of obviousness is established by showing some objective
teaching or suggestion in the applied prior art taken as a whole and/or knowledge generally
available to one of ordinary skill in the art would have led that person to the claimed invention,
including each and every limitation of the claim, without recourse to the teachings in appellant's
disclosure. See generally In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47
(Fed. Cir. 1992) (Nies, J., concurring).
The starting point in considering the claimed invention vis-à-vis the prior art under either '
102(b) or ' 103 is to determine the invention encompassed by the claims under consideration.
Indeed, the dispositive issue in this appeal is whether the claims can be construed to be limited to
drilling fluids which term not only is used to define the compositions to which appealed claim 1 is
drawn but also to define one of the ingredients in these compositions. The examiner contends
that Athe drilling fluids of the claims and the fluids of the prior art are only distinguished by
intended use@ which Adoes not distinguish two otherwise identical elements,@ and takes the
position that Adrilling fluids can be interpreted as being fluids which can be used in drilling
processes@ and Ashould not be limited by what Appellant believes are conventional drilling fluids@
(answer, pages 3-4). Appellant points to the definition of Adrilling fluid@ in his specification and
contains that that definition must be used to define the term in the appealed claims (reply brief,
pages 2-3).
We agree with appellant. In determining the subject matter sought to be patented, and
mindful that we must give the broadest reasonable interpretation to the terms of the appealed
claims consistent with appellant's specification as it would be interpreted by one of ordinary skill
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