Appeal No. 1997-1875
Application No. 08/451,378
In order for a § 102 rejection to be proper, the
reference must clearly and unequivocally disclose the claimed
compound or direct those skilled in the art to the compound
without any need for picking, choosing, and combining various
disclosures not directly related to each other by the
teachings of the cited reference. In re Arkley, 455 F.2d 586,
587, 172 USPQ 524, 526 (1972). Compare In re Petering, 301
F.2d 676, 681, 133 USPQ 275, 279 (1962). In the case at bar,
the only way to derive the here claimed compounds from any of
the applied references is via the prohibited exercise of
picking, choosing and combining disclosures within the
respective references. That is, the appellants' claimed
compounds would be obtained from the applied reference
teachings only by selecting certain choices for numerous
variables within the generic compound formula disclosed in
these references.
Under the foregoing circumstances, we cannot regard the
applied references as anticipatory of the appealed claims. It
follows that the examiner's § 102 rejection of claims 1
through 13 as being anticipated by the British reference to
3
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