Appeal No. 2001-1251 Page 4
Application No. 08/369,865
To emphasize the examiner’s indiscriminate selective process, appellants
point out (Brief, page 6) with regard to Hatton that “the [e]xaminer has chosen
one line from a list of pests spanning cols. 15, 16 and 17 of Hatton and a locus
spanning col. 18, line 10 et seq and col. 19, lines 1-2.” Similarly, with regard to
Buntain, appellants argue (Brief, pages 7-8) that in order to arrive at appellants’
claimed invention, a skilled artisan must choose from a list of 101 compounds, to
apply to one locus from “a nine line listing of numerous loci,” to treat
grasshoppers or locusts from the various pests listed on pages 4 and 5 of
Buntain.
Accordingly, appellants argue (Brief, page 6) “that an artisan who did not
have the benefit of the instant disclosure would not have had the guidance to
pick and choose [from the Hatton disclosure] as has the [e]xaminer.” Appellants
also urge (Brief, page 8) “that the artisan at the time the present invention was
made would have had a difficult choice when trying to determine which of the
101 particularly interesting compounds listed on pages 2-4 of … [Buntain] would
be useful against which insect from the many listed….” Therefore, appellants
conclude that Hatton or Buntain do not anticipate the claimed invention. We
agree.
“Under 35 U.S.C. § 102, every limitation of a claim must identically appear
in a single prior art reference for it to anticipate the claim.” Gechter v. Davidson,
116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997). “Every element
of the claimed invention must be literally present, arranged as in the claim.”
Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226, 1236, 9 USPQ2d 1913,
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007