Appeal No. 2000-1162
Application 08/967,876
868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989); In re Stencel, 828 F.2d 751, 754-
55, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987). Thus, the composition as claimed exists whenever
the three specified ingredients are present, regardless of the presence of other ingredients. See
Exxon Chemical Patents, 64 F.3d at 1555-58, 35 USPQ2d at 1802-05 (“Consequently, as
properly interpreted, Exxon’s claims are to a composition that contains the specified ingredients
at any time from the moment at which the ingredients are mixed together.”).
We first consider the two grounds of rejection under § 102(e). It is well settled that the
examiner has the burden of making out a prima facie case of anticipation under § 102(b) in the
first instance by pointing out where each and every element of the claimed invention, arranged as
required by the claim, is described identically in a single reference, either expressly or under the
principles of inherency, in a manner sufficient to have placed a person of ordinary skill in the art
in possession thereof. See generally, In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990). It is also well settled that if a reference does not disclose a specific embodiment
which satisfies all of the claim limitations, the reference will nonetheless describe the claimed
invention within the meaning of § 102(b) if it “clearly and unequivocally . . . [directs] those
skilled in the art to [the claimed invention] 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 (CCPA 1972). Whether a
reference provides clear and unequivocal direction to the claimed invention is determined on the
total circumstances with respect to the disclosure of the reference, see In re Petering, 301 F.2d
676, 682, 133 USPQ 275, 280 (CCPA 1962), including “not only specific teachings of the
reference but also the inferences which one of ordinary skill in the art would reasonably be
expected to draw therefrom.” In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA
1968). Such direction is provided to one of ordinary skill in the art where the totality of the
reference provides a “pattern of preferences” which describes the claimed invention without the
necessity for judicious selection from various disclosures thereof. See In re Sivaramakrishnan,
673 F.2d 1383, 213 USPQ 441 (CCPA 1982); In re Schaumann, 572 F.2d 312, 316-17, 197
USPQ 5, 9-10 (CCPA 1978); Petering, 301 F.2d at 681-82, 133 USPQ at 279-80.
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