Appeal No. 1999-1162
Application No. 08/427,837
DECISION ON APPEAL
35 U.S.C. § 102(b)
Claim 9 stands rejected under 35 U.S.C. § 102(b) as unpatentable over Ray.
A claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference. Verdegaal
Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.), cert.
denied, 484 U.S. 827 (1987). The inquiry as to whether a reference anticipates a claim
must focus on what subject matter is encompassed by the claim and what subject matter is
described by the reference. As set forth by the court in Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026
(1984), it is only necessary for the claims to "'read on' something disclosed in the
reference, i.e., all limitations of the claim are found in the reference, or 'fully met' by it."
The examiner relies on Ray as describing a mixture of affinity purified
hemagglutinin-neuraminidase (HN) and fusion (F) glycoproteins of human parainfluenza
virus type 3 (PIV3) used to investigate the induction of a protective immune response
following immunization of hamsters. Answer page 5 and Ray, page 786. Thus, it would
appear that this embodiment of Ray anticipates the claimed composition (Claim 9). As
indicated in the claim interpretation herein, the patentability of the claimed product does
not depend on its method of production, and we give no patentable weight to the term
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