Appeal No. 2001-0163
Application No. 08/951,502
OPINION
We reverse the aforementioned rejections. We need to address only the
independent claims, i.e., claims 11 and 21.
In order for a claimed invention to be anticipated under 35 U.S.C. § 102, all of
the elements of the claim must be found in one reference. See Scripps Clinic &
Research Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010
(Fed. Cir. 1991); In re Schreiber, 44 USPQ2d 1429, 1433 (Fed. Cir. 1997), (“To
anticipated a claim, a prior art reference must disclose every limitation of the claimed
invention, either explicitly or inherently.”)
In rejecting claims 11 and 21 the Examiner states that “[t]he claims are
considered to read on Yamashita. (Answer, p. 3). The Examiner also states that “if a
difference exists between the claims and Yamashita ... it would have been obvious to
optimize the steps of Yamashita to enhance separation. (Answer, p. 3).
We cannot uphold the Examiner’s rejection. Appellant’s claims 11 and 21 both
require particles of polysaccharide derivatives which are not supported on a silica gel
carrier. The Examiner has not adequately explained where Yamashita discloses the
use of a packing material which is not supported on silica gel. The Examiner also has
not explained how optimizing the steps of Yamashita would have motivated a person
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