Appeal No. 2001-0826 4
Application No. 09/064,486
subject matter, a person having ordinary skill in the art would have to carefully pick and
choose and combine various disclosures among the teachings of Gott to obtain the requisite
component to prepare the rigid polyurethane foam required by the claimed subject matter.
While picking and choosing may be entirely proper in making an obviousness rejection
under 35 U.S.C. § 103, it has no place in making a rejection under 35 U.S.C. § 102(b)
for anticipation. See In re Arkley, 455 F.2d 586, 587-88, 172 USPQ 524, 526
(CCPA 1972). Furthermore, we conclude that Gott does not provide a disclosure with
sufficient specificity to constitute a description of the claimed composition within the
purview of 35 U.S.C. § 102(b). See In re Schaumann, 572 F.2d 312, 315, 197 USPQ
5, 8 (CCPA 1978). Accordingly, we do not sustain the rejection of the claims on appeal
under 35 U.S.C. § 102(b) as anticipated by Gott.
OTHER MATTERS
Upon return of this case to the jurisdiction of the examiner, careful consideration
should be given to instituting a rejection of each of the claims under Section 103(a) over
Gott.
Gott discloses the preparation of a rigid urethane foam composition utilizing a
polyol having a molecular weight of 200. See column 3, line 7. The specification defines
the molecular weight of the low molecular weight compound (LMWC) as being at most
about 200. See specification, page 8. It is well established that a, “claimed invention is
rendered prima facie obvious by the teachings of a prior art reference that discloses a range
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