Appeal No. 95-2022
Application No. 08/063,056
respect to claims 10, 12, 13 and 15. Again, we find no
limitation in these claims serving to distinguish appellants'
product from the product described by Forss, EXAMPLE 10. Compare
In re Hafner, 410 F.2d 1403, 1405, 161 USPQ 783, 785 (CCPA 1969)
(§ 112 provides that the specification must enable one skilled in
the art to "use" the invention, whereas § 102 makes no such
requirement for an anticipatory disclosure; a disclosure lacking
a teaching how to use a fully disclosed compound for a specific,
substantial utility is adequate to anticipate a claim drawn to
the compound).
The rejection of claims 3 and 35 under 35 U.S.C. § 103,
however, stands on different footing. These claims define a low
molecular weight lignin product derived from whole bagasse
lignin. According to the examiner, there is not "a clear
distinction" between the prior art low molecular weight lignin
product derived from black liquor (Forss, EXAMPLES 10 and 11) and
the claimed low molecular weight lignin product derived from
whole bagasse lignin. See the Examiner's Answer, page 5. We
disagree.
In our judgment, the examiner focuses too narrowly on the
molecular weight limitation in claims 3 and 35 without
considering the claimed subject matter as a whole, including the
nature of whole bagasse lignin. In this regard, we invite
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