Ex Parte Vogt et al - Page 3

                Appeal 2007-3387                                                                             
                Application 10/307,027                                                                       

                      The Appellants appeal from the Examiner’s decision rejecting the                       
                claims on appeal under 35 U.S.C. §§ 102(b) and 103(a).                                       
                                                     ISSUES                                                  
                      1. Does Konagaya unequivocally teach each and every limitation                         
                of the claimed invention without need for picking, choosing, and combining                   
                various disclosures therein within the meaning of 35 U.S.C. § 102(b)?                        
                      2. Would Konagaya have suggested including in its antibacterial                        
                composition freed of alkali metal halides at least one polyurethane binder                   
                material prior to applying them on a fabric substrate within the meaning of                  
                35 U.S.C. § 103(a)?                                                                          
                         PRINCIPLES OF LAW, FACTUAL FINDINGS, and ANALYSES                                   
                                              ANTICIPATION                                                   
                      To establish anticipation under 35 U.S.C. § 102(b), a single prior art                 
                reference must unequivocally disclose the claimed invention without any                      
                need for picking, choosing, and combining various disclosures therein.  In re                
                Arkley, 455 F. 2d 586, 587, 172 USPQ 524, 526 (CCPA 1972).                                   
                      As explained in the discussion of the Examiner’s § 103 rejection                       
                below, we determine that some picking, choosing, and combining various                       
                disclosures of Konagaya is necessary to arrive at the claimed subject matter.                
                Although such picking, choosing, and combining may be entirely proper in                     
                making a § 103(a) rejection, it has no place in the making of a § 102(b)                     
                rejection.  Arkley, 455 F.2d at 587, 172 USPQ at 526.                                        
                      Accordingly, we are constrained to reverse the Examiner’s decision                     
                rejecting the claims on appeal under 35 U.S.C. § 102(b).                                     



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