Appeal No. 96-2884
Application No. 08/181,997
Anticipation of a method claim occurs if all of the steps of the claim, in the
recited combination of steps and otherwise considering the claim as a whole, are found in a
single prior art reference of the type defined in 35 U.S.C. 102. RCA Corp. v. Allied Digital
Data Sys., Inc.,730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). Every limitation
positively recited in a claim must be given effect in order to determine what subject matter
that claim defines under 35 U.S.C. 102. In re Wilder, 429 F.2d 447, 450, 166 USPQ 545,
548 (CCPA 1970).
Herein we agree with appellant that Okamura does not anticipate the claimed
invention. Initially we note that the examiner has not pointed out wherein Okamura
describes the specific gas combination of carbon monoxide and/or carbon dioxide, methane,
with hydrogen in the second step. The examiner cites column 1, lines 40-65, column 2, lines
60-68, col. 3, lines 35-50 and column 9, line 55 and argues that the claimed materials are
explicitly recited by Okamura (answer , page 7). However, in our view, Okamura’ s listing of
eight classes of useful reducing and carbonizing agents with exemplary compounds (column
2, line 60 through column 3, line 16), employed in the second step of the process, does not
provide the necessary description of the claimed gas combinations to constitute an
anticipation. “Anticipation requires the presence in a single prior art reference disclosure of
each and every element of the claimed invention, arranged as in the claim” (emphasis
added). Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730 F.2d
1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
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