Appeal No. 1998-2623
Application No. 08/677,062
be encompassed by the disclosure of the applied reference.”
(Emphasis original.) (Id.). We disagree. We find that the
general disclosure of Fiske teaches a metal fluoride catalyst
which may be “preferably an aluminum fluoride, a nickel
fluoride, a chromium fluoride, or a mixture thereof.” (Col.
1, ll. 32-34). There is no general disclosure or teaching in
Fiske of any ratio of the metal fluorides. To imply a 2
generic range of ratios from the lack of disclosure in Fiske
coupled with selection of an atom percent of chromium “at
least equal” to the atom percent of the metal fluoride to meet
the limitation of claim 3 on appeal would entail picking and
choosing from the reference disclosure. Accordingly, this
limitation cannot be said to be “described” within the meaning
of 35 U.S.C. § 102. See In re Arkley, 455 F.2d 586, 587, 172
USPQ 524, 526 (CCPA 1972). Therefore we cannot sustain the
examiner’s rejection of the claims on appeal under 35 U.S.C. §
102.
With regard to the examiner’s rejection under § 103, the
examiner concludes that “any ratio would display at least some
2The specific disclosure of the examples of Fiske will be
discussed below.
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