Appeal No. 1996-2396
Application 08/285,873
I.
In view of its brevity, we reproduce the examiners rejection under 35 U.S.C. §
102(b) in its entirety:
Choay teaches a method of treating excessive exfoliation of the skin which is
encompassing of dandruff comprising the application of B to the skin which is
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encompassing of the scalp. The method has utility in treating both human and non-human
animals. (col. 5, lines 35-36; col. 9, lines 30-32; col. 10, lines 44-46; col. 13, lines 28-29;
col. 14, lines 40-43 and table I) [Answer, p. 2].
We find the examiner’s position untenable.
It is well established that anticipation requires that each and every element set forth
in the claim be present, either expressly or inherently, in a single prior art reference. In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950 (Fed. Cir. 1999); Verdegaal
Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051,1053 (Fed. Cir. 1987);
Lindemann Maschinenfabrik GMGH v. American Hoist and Derrick Co., 730 F.2d
1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). Thus, in order for the teachings of
Choay to anticipate the method described in claim 1, for example, the patent must
disclose a method of treating the scalp of a subject having excessive exfoliation or
hyperkeratization thereof by applying vitamin B12 to said scalp in a manner such that the
exfoliation or hyperkeratization is alleviated. To that end, the examiner directs us to
consider the disclosure in the patent of the treatment of (i) an erythema-type solar burn of
rats with a cream comprising vitamin B12 which resulted in diminished scaling of the rats’
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