Appeal No. 1999-0341
Application No. 08/543,351
assert (Brief, page 6) “that each and every element of the claims is not taught as this
[Shiokawa] reference does not provide a working example in which wood is
protected.
Appellants argue (Brief, page 7) that since none of the examples in
Shiokawa teach protecting wood, the passage (Shiokawa, column 54, lines
18-21) relied upon by the examiner must be a “generic teaching which suggests but
does not anticipate the instant invention.” Appellants state (Brief, page 9) “[a]s
Shiokawa does not specifically teach 1-(6-chloro-3-pyridylmethyl)-2-nitroimino-
imidazoline can be used to preserve wood or other materials, it is respectfully
submitted this reference cannot anticipate claims 14 and 15.”
In order to anticipate the reference must describe the applicants’ claimed
invention sufficiently to have placed a person of ordinary skill in the field of the
invention in possession of it. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990).
With this in mind we start our analysis by considering, as directed by the
examiner, column 58, lines 30-35 of Shiokawa which teaches “Compound No. 11”
the same compound recited by appellants (Brief, page 13) as “[t]he compound of
the instant [appealed] claim[s].” Compound No. 11, is the same compound found in
Shiokawa’s claim 21 which states “1-(2-chloro-5-pyrimidinylmethyl)-2-
(nitroimino)imidazolidine according to claim 1 of the formula ….” Thus, Shiokawa
clearly identifies 1-(6-chloro-3-pyridylmethyl)-2-nitroimino-imidazolidine, as a
species within claim 1.
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