Appeal No. 96-1447
Application 08/028,764
or under 35 U.S.C. § 103, both ground of rejection based on Adler3 (answer, pages 6-7 and 8-9).
It is well settled that anticipation under § 102 is a question of fact, based on the limitations in the
claims, and that in order to make out a prima facie case of anticipation, the examiner must point
out where each and every element of the claimed invention, arranged as required by the claims, is
found in a single prior art reference, either expressly or under the principles of inherency. See
generally In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986); Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457, 221 USPQ
481, 485 (Fed. Cir. 1984). It is equally well settled that the examiner may satisfy his burden of
establishing a prima facie case of obviousness under § 103 by showing some objective teachings
or suggestions in the prior art taken as a whole or that knowledge generally available to one of
ordinary skill in the art would have led that person to combine the relevant teachings of the
applied prior art in the proposed manner to arrive at the claimed invention, including each and
every limitation of the claims, without recourse to the teachings in appellant’s disclosure. See
generally In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992)
(Nies, J., concurring); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed.
Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988).
The examiner has failed to make out a prima facie case under either statutory provision.
As pointed out by appellants in their brief filed August 7, 1995 (Paper No. 24) and reply
brief, the teaching in Adler of a membrane fragment containing agar in a petri dish which is used
as the culture medium per se, that is, without the addition of solution (e.g., col. 3, lines 23-42,
and col. 5, lines 8-16), does not provide a description the claimed invention within the meaning
of § 102(b) and would not have motivated one of ordinary skill in this art to incorporate the
membrane fragments into a solution contact surface4 within the meaning of § 103. Indeed, with
3 Adler and the additional reference “Lafourcade,” relied on in the second ground of rejection,
are listed at page 4 of the answer. The examiner also lists Hitzman, which reference was relied on
by the examiner along with the Arkles et al. and Adler et al. references of record in a ground of
rejection withdrawn on appeal (answer, page 9).
4 We find that one of ordinary skill in this art would reasonably have determined from
appellants’ specification at page 17, lines 18-25, that the claim language “solution contact surface
comprising a sufficient amount of isolated oxygen scavenging membrane fragments” of the
independent appealed claims, e.g., claim 1, would include incorporation of the membrane
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