Appeal No. 2001-0964
Application No. 09/069,442
The Section 102 Rejections
It is well settled that anticipation under 35 U.S.C. § 102
is established only when a single prior art reference discloses,
expressly or under principles of inherency, each and every
element of a claimed invention. RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir), cert. dismissed, 468 U.S. 1228 (1984). In particular, for
a Section 102 rejection to be proper, the prior art reference
“must clearly and unequivocally disclose the claimed [invention]
or direct those skilled in the art to the [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, 587-88, 172 USPQ 524, 526
(CCPA 1972).
Korbelak discloses an electroplating bath comprising five
components plus water and discloses numerous effective compounds
for each of these components. As correctly indicated by the
examiner, each of the compounds required by appealed independent
claim 4 are among the many taught by patentee as possible
ingredients in his electroplating bath. However, as correctly
argued by the appellant, the Korbelak reference contains no
disclosure that the bath should be free of cobalt, cadmium and
4
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