Appeal No. 1999-2703
Application No. 08/772,068
not exemplify a species falling within the overlap.
Anticipation under 35 U.S.C. 102 in such cases would
appear to depend upon the extent of overlap which
determines the amount of picking and choosing
necessary to arrive at the claimed invention. In
situations involving virtually little or no
selectivity, a reference may be considered to describe
the overlapping portion of a claimed invention within
the meaning of 35 U.S.C. 102. In re Sivaramakrishnan,
673 F.2d 1383, 213 USPQ 441 (CCPA 1982); In re
Schaumann, 572 F.2d 312, 197 USPQ 5 (CCPA 1978); In re
Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962).
However, where a prior art disclosure is extremely
broad, a prima facie case of obviousness under 35
U.S.C. 103 may not even arise. In re Jones, 958 F.2d
347, 21 USPQ2d 1941 (Fed. Cir. 1992). Between these
extremes, as in the situation before us, the overlap
would have rendered the claimed invention prima facie
obvious under 35 U.S.C. 103. Merck & Co., Inc. v.
Biocraft Laboratories, Inc., 874 F.2d 804, 10 USPQ2d
1843 (Fed. Cir. 1989); In re Malagari, [499 F.2d
1297, 182 USPQ 549 (CCPA 1974)]; In re Susi, [440 F.2d
442, 169 USPQ 423 (CCPA 1971)]. Thus, patentability
under 35 U.S.C. 102 and 35 U.S.C. 103 must be resolved
on a case-by-case basis, not by a litmus test
determined by an end point . . . or any overlap
whatsoever.
Rejection under 35 U.S.C. § 102
As in Lee, 31 USPQ2d at 1111, the patentee, Hamaguchi, does
not recognize the problem solved by appellant nor disclose any
particular device satisfying the requirements of the appealed
claims. In other words, Hamaguchi's disclosure "does not
describe the claimed invention within the meaning of 35 U.S.C.
[§] 102 because it does not identically disclose a ... [device]
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