Appeal No. 1997-2874
Application 08/219,160
It can be seen that claim 1 in the parent application and claim 1 before us are the same in all
respects except that the latter imposes a more severe restriction on the carboxylic acid content
of the claimed hydroxamic acid polymers. That is, claim 1 before us requires that “the
carboxylic acid groups constitutes less than about 3 mole percent of the functional groups” of
the claimed hydroxamic acid polymers whereas claim 1 in the parent application required that
“the carboxylic acid groups constitute less than about 15% of the functional groups” of the
claimed hydroxamic acid polymers. Claim 1 in the parent application was broader and,
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therefore, more vulnerable to a prior art rejection, compared with claim 1 before us. As will
become apparent in the ensuing discussion, the claim language requiring “less than about 3
mole percent” carboxylic acid functional groups in applicants' hydroxamic acid polymers
constitutes the salient limitation in the claims before us and serves to patentably distinguish
over the cited prior art.
For a prior art reference to anticipate in terms of 35 U.S.C. § 102, every element of the
claimed invention must be identically shown in a single reference. Diversitech Corp. v. Century
Steps, Inc., 850 F.2d 675, 677, 7 USPQ2d 1315, 1317 (Fed. Cir. 1988).
Here, the examiner has not established that Woodberry describes hydroxamic acid polymers
having “less than about 3 mole percent” of carboxylic acid functional groups, a requirement of
every independent claim on appeal. The examiner does not point to any portion of Woodberry
1Every independent claim before us (1, 15, 18, 21, and 23) requires that
applicants' hydroxamic acid polymers or polymeric material have less than about 3 mole
percent carboxylic acid functional groups.
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