Appeal No. 2002-0265 Page 6
Application No. 08/787745
and neither meets this requirement. In example 1 (column 8), while the tip end diameter
of .334 inches is within the appellants’ claimed range, the butt end diameter of .590
inches is well beyond the claimed range. In example 2 (column 9), the butt end
diameter of .520 inches is within the claimed range, but the tip end diameter of .189 is
considerably below the claimed range. Thus, neither example anticipates the claimed
range.
The MPEP also addresses the situation in which the prior art teaches a range
which touches or overlaps the claimed range but where, as is the situation here, no
specific examples fall within the range. In column 5 Akatsuka discloses a tip end range
diameter of .173-.488 inches, which encompasses the claimed range of .330-.400
inches, and a butt end range of .492-.728, which overlaps the upper end of the claimed
range of .400-.540 inches. The MPEP counsels that when this is the case, in order to
be anticipatory the claimed subject matter must be disclosed in the reference with
“sufficient specificity to constitute an anticipation under the statute,” a decision that is
fact dependent and is similar to that of “clearly envisaging” a species from a generic
teaching. With regard to this theme, when the claimed invention is not identically
disclosed in a reference, and instead requires picking and choosing among a number of
different options disclosed in a reference, then the reference does not anticipate. The
invention must have been known to the art in the detail of the claim; that is, all of the
elements and limitations of the claim must be shown in a single prior reference,
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