Appeal 2007-1867
Application 09/864,113
1 within the patent disclosure so as to give one of ordinary skill in the art notice of
2 the change).
3 Anticipation3
4 "A claim is anticipated only if each and every element as set forth in the claim
5 is found, either expressly or inherently described, in a single prior art reference."
6 Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d
7 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or
8 compositions, either generically or as alternatives, the claim is deemed anticipated
9 if any of the structures or compositions within the scope of the claim is known in
10 the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed.
11 Cir. 2001). "The identical invention must be shown in as complete detail as is
12 contained in the . . . claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236,
13 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as
14 required by the claim, but this is not an ipsissimis verbis test, i.e., identity of
15 terminology is not required. In re Bond, 910 F.2d 831, 832, 15 USPQ2d 1566,
16 1567 (Fed. Cir. 1990).
17 Enablement of Prior Art
18 Prior art must be enabling in rejections under 35 U.S.C. §§ 102 and 103, but
19 the standard of enablement is not that of 35 U.S.C. § 112.
20 A patent claim “cannot be anticipated by a prior art reference if
21 the allegedly anticipatory disclosures cited as prior art are not
22 enabled.” Elan Pharm., Inc. v. Mayo Found. for Med. Educ. &
23 Research, 346 F.3d 1051, 1054 (Fed. Cir. 2003). The standard for
24 what constitutes proper enablement of a prior art reference for
25 purposes of anticipation under section 102, however, differs from the
26 enablement standard under section 112. In In re Hafner, 410 F.2d
27 1403 (CCPA 1969), the court stated that “a disclosure lacking a
28 teaching of how to use a fully disclosed compound for a specific,
7
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