Appeal No. 2003-2023
Application 09/581,440
directed to azeotrope-like compositions containing perfluorobutyl ethyl ethers and a halo-
hydrocarbon solvent. None of the azeotrope-like compositions encompassed by claim 4 or the
other claims contain ethyl acetate or any other ester. The reference does disclose that the organic
solvents used with perfluorobutyl ethyl ether to prepare azeotrope-like compositions include
“esters containing 4 carbon atoms (e.g., methyl propionate and ethyl acetate).” See, e.g., col. 1,
line 66, to col. 3, line 15, and col. 5, lines 48-50; cf., e.g., claim 11.
In view of the relevant part of claim 4 and in light of the remainder of the disclosure of
Flynn ‘595, appellants submit that it is readily apparent that the term “perfluorobutyl methyl
ether” is a typographical error, and thus an azeotrope-like composition containing perfluorobutyl
methyl ether is neither encompassed by claim 4 of Flynn ‘595 nor enabled thereby (brief,
pages 5-6).
The examiner presents no relevant argument in response to appellants’ position (see
answer, page 3).
We agree with appellants. It is well settled that the examiner has the burden of
establishing a prima facie case of anticipation of the claimed invention encompassed by appealed
claim 1 under § 102(b) in the first instance by pointing out where each and every element of the
claimed invention, arranged as required by the claim, is described identically in a single
reference, either expressly or under the principles of inherency, in a manner sufficient to have
placed a person skilled in the art in possession thereof. See generally, In re Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). The examiner has not established that the single
appearance of the term “perfluorobutyl methyl ether” in the context of claim 4 of Flynn ‘595
alone would have placed one skilled in this art in possession of an azeotrope-like composition
containing the same and ethyl acetate as required by appealed claim 1. See In re Yale, 434 F.2d
666, 168 USPQ 46, 48-49 (CCPA 1970) (listing of a compound in reference would have been
apparent typographical error to one of ordinary skill in the art, and thus would not have described
or suggested the compound to that person so as to place it within his/her possession). Indeed, it
is apparent that one skilled in this art would have readily recognized from claim 4 of Flynn ‘5953
3 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
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