Appeal No. 95-3268
Application 07/521,695
Anticipation requires the disclosure, in a single prior art reference, of each element
of the claim under consideration. W.L. Gore & Assoc. v.Garlock, Inc., 721 F.2d 1540,
1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). In
considering Aston (I), we note particularly Example A, which discloses the administration
of a human growth hormone and antibody combination to non-human vertebrate. The
observed results, over a period of three weeks, included increased weight gain in the thus
treated mice as compared to the control given no growth hormone or given growth
hormone without the antibody. This example would reasonably appear to meet all
limitations of claim 23 and establish a prima facie case of anticipation of the claimed
subject matter with regard to claims 23-25.
In rebuttal, appellants argue that the reference fails to disclose the limitations of
claim 23, which require "potentiating the activity of a somatotropin over prolonged periods
of time" and "such that the weight of the vertebrate [, non-human] continues to exceed that
of a vertebrate [, non-human] treated with the same amount of said somatotropin alone
over a given period of time." (reply brief, page 3). Where functional language is used, it is
appropriate to look to the specification for guidance in determining the finite amounts
which correspond to the functional language. See In re Woodruff, 919 F.2d 1575, 1577,
16 USPQ2d 1934, 1936 (Fed. Cir. 1990); In re Herz, 537 F.2d 549, 551, 190 USPQ 461,
463 (CCPA 1976). We find nothing in the specification which would define or limit this
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