Appeal No. 1997-1801
Application 08/351,162
and probative value, for a finding of anticipation requires that all aspects of the
claimed invention were already described in a single reference: a finding that is not
supportable if it is necessary to prove facts beyond those disclosed in the reference
in order to meet the claim limitations. The role of extrinsic evidence is to educate
the decision-maker to what the reference meant to persons of ordinary skill in the
field of the invention, not to fill gaps in the reference. If it is necessary to reach
beyond the boundaries of a single reference to provide missing disclosure of the
claimed invention, the proper ground is not §102 anticipation, but §103
obviousness. Indeed, a publication on the Harris dissertation was included in the
prior art statement filed by Scripps and was a cited reference under §103.
[Citations omitted.]
Scripps, 927 F.2d at 1576, 18 USPQ2d at 1010. The Scripps case was an appeal from a civil action for
infringement. The above-quoted statement relates to the district court’s holding that Scripps claims 24, 26
and 27 were invalid for anticipation. Scripps, 927 F.2d at 1576, 18 USPQ2d at 1010. These claims,
however, were product claims not product-by-process claims. Scripps, 927 F.2d at 1570, 19 USPQ2d
at 1005. The Marshall case related to process claims. Marshall, 578 F.2d at
302-03, 198 USPQ 344-45. As we indicated above, the determination of the patentability of a product-
by-process claim is based on the product not the process. Thorpe, 777 F.2d at 697, 227 USPQ at 966;
Brown, 459 F.2d at 535, 173 USPQ at 688; Pilkington, 411 F.2d at 1348, 162 USPQ at 147. In fact,
the Federal Circuit applied this principal to Scripps’ product-by-process claims. With respect to Scripps
product-by-process claims, the court stated: “In determining patentability we construe the product as not
limited by the process stated in the claims.” Scripps, 927 F.2d at 1583, 18 USPQ2d at 1016. Thus, the
fact that the prior art does not describe applicants process steps does not show that the examiner’s
rejection was erroneous.7
2.
7
In light of the well established precedent on the patentability of product-by-process claims,
applicants argument that the references did not anticipate the claims because the references did not disclose the
process steps is frivolous.
7
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