Appeal No. 94-2612
Application 07/759,478
the claim is anticipated under 35 U.S.C. § 102. See In re
Bond, 910 F.2d 831, 832, 15 USPQ2d 1566, 1567 (Fed. Cir.
1990). The examiner has characterized the rejection under §
103 but, as noted by our reviewing court:6
However, this Court has sanctioned the
practice of nominally basing rejections on
§ 103 when, in fact, the actual ground of
rejection is that the claims are
anticipated by the prior art. See In re
Dailey, 479 F.2d 1398, 178 USPQ 293 (CCPA
1973). The justification for this
sanction is that lack of novelty in the
claimed subject matter, e.g., as evidenced
by a complete disclosure of the invention
in the prior art, is the “ultimate or
epitome of obviousness.” In re Kalm, 54
CCPA 1466, 1470, 378 F.2d 959, 962, 154
USPQ 10, 12 (1967)[footnote omitted].
Appellants argue that sufficient evidence has been
submitted to rebut any prima facie case of obviousness (brief,
pages 5-9). However, as discussed above, the subject matter
on appeal is described by Röechling within the meaning of 35
U.S.C. § 102(b). A proper rejection under § 102 cannot be
overcome by a showing of new and unexpected results. See In
6 In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974). See also In
re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982).
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