Appeal 2006-0990
Application 10/209,369
In situations involving virtually little or no need to make selections, a
reference may be considered to describe the claimed subject matter within
the meaning of 35 U.S.C. § 102. See In re Schaumann, 572 F.2d 312,
316-17, 197 USPQ 5, 9 (CCPA 1978) (Reference anticipated because it
embraced a very limited number of compounds closely related to one
another in structure such that the reference provided a description of those
compounds just as surely as if they were identified in the reference by name,
one of those compounds being the claimed compound) and In re Petering,
301 F.2d 676, 681-82, 133 USPQ 275, 279-80 (CCPA 1962) (While
description of a broad class of compounds in the reference did not describe
the class of compounds claimed such that the claimed compound was
anticipated, the pattern of preferences disclosed in the reference in
connection with the generic formula constituted a description of a definite
and limited class of compounds such that one of ordinary skill in the art
would at once envisage each member of the class). 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. See In re Baird, 16 F.3d 380, 382,
29 USPQ2d 1550, 1552 (Fed. Cir. 1994) (Generic diphenol formula
disclosed in the reference encompassed more than 100 million diphenols,
only one of which was the claimed bisphenol A and there was nothing in the
disclosure of the reference suggesting the selection of chemical groups
leading to bisphenol A). Between these extremes are prior art disclosures
that would have rendered the claimed invention prima facie obvious under
35 U.S.C. § 103. In fact, it is well settled that where the prior art describes
the components of a claimed compound or composition in concentrations
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