Appeal 2007-1026
Application 10/405,819
several culturing steps, which includes culturing on maintenance medium.
See summary of Pullman, supra at pp. 3-4. Thus, although Example 2 may
not disclose which maintenance medium was used, surely the embryos were
cultured on a maintenance medium. Appellants do not dispute this fact. The
only question is what maintenance medium was used in Example 2. As
discussed supra, there are three preferred choices. For the condition
described in Example 2 where the embryos were cultured on a development
medium without GA, the skilled worker would immediately envision three
methods: using a development medium without GA preceded by a
maintenance medium with either 1) GA and ABA, 2) GA alone, or 3) ABA
alone – the latter method which would meet the requirements of claim 1.
We emphasize that there is no requirement in the law for a single
working example to disclose a claimed method in order to find anticipation.
For example, anticipation has been found in circumstances where the
anticipatory species was not specifically named in the reference, but could
be envisioned within the disclosed genus by the skilled worker upon reading
the reference’s description. See In re Petering, 301 F.2d 676, 681, 133
USPQ 275, 279 (CCPA 1962); In re Schaumann, 572 F.2d 312, 315, 197
USPQ 5, 8 (CCPA 1978); Sanofi-Synthelabo v. Apotex Inc., 470 F.3d 1368,
1377, 81 USPQ2d 1097, 1102-03 (Fed. Cir. 2006).
For the foregoing reasons, we affirm the rejection of claim 1. Claims
7-9, 16-27, and 29 fall with claim 1 because they were not separately argued.
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