Appeal No. 2003-0998 Page 10
Application No. 08/676,143
oligomer,” but argue that that example at best discloses compounds having two-
subunit oligomers. Since the claims on appeal require oligomers having at least
three monomer units, Appellants conclude, “[n]one of the scaffold/subunit
combinations described by Lebl falls within Appellants’ pending claims.” Appeal
Brief, pages 13-14.
“Under 35 U.S.C. § 102, every limitation of a claim must identically appear
in a single prior art reference for it to anticipate the claim.” Gechter v. Davidson,
116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997). “Every element
of the claimed invention must be literally present, arranged as in the claim.”
Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226, 1236, 9 USPQ2d 1913,
1920 (Fed. Cir. 1989).
We agree with Appellants that the examiner has not shown that Lebl
discloses a library meeting all the limitations of the instant claims. At best, the
examiner has pointed to general disclosures in the reference that might
encompass compounds having one of the templates recited in the claims and
that could have oligomers made up of at least three monomers of the recited
subunits. See, e.g., the Examiner’s Answer, pages 15-17. The examiner has
not, however, pointed to a specific compound that meets the limitations of a
“synthetic receptor” recited in claim 25, much less a library comprising a plurality
of such synthetic receptors. Therefore, the examiner has not shown that Lebl
anticipates the instant claims. The rejection under 35 U.S.C. § 102(e) is
reversed.
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