Appeal No. 95-1274
Application No. 07/914,150
follows that Paul does not describe the amount of said benzofuran
derivative which is contained in the rubber composition.
In responding to appellants’ argument that Paul fails to
describe the claimed amount of benzofuran derivative, the
examiner, at page 4 of the answer, contends that “Paul does not
call for 0.01-5% [sic] of the reaction mixture but calls for this
concentration of antioxidant” (emphasis in the original). We
disagree with the examiner’s contention. As we noted earlier,
the anti-oxidant of Paul comprises the reaction product of
polyhydric phenol and an aliphatic diene. This reaction product
comprises a number of constituents including benzofuran
derivatives. See page 1, column 2, line 21 to page 2, column 1,
line 5. We find that Paul does not describe the proportion of
each constituent in the reaction product and therefore does not
describe the amount of benzofuran derivative as called for by
claim 1.
Absence of a claim limitation in a reference negates
anticipation of the claim by that reference. See e.g. Rowe v.
Dror, 112 F.3d 473, 479, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
Accordingly, Paul does not anticipate the subject matter of claim
1. We therefore reverse the decision of the examiner in
rejecting claims 1 through 6.
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