Appeal No. 2002-0214
Application 08/914,244
pages 12 through 15, first full paragraph) that the examiner has failed to make out a prima facie
case of anticipation by merely pointing to the fact that the claimed ranges for the effective
amount of Na2O (e.g., appealed claims 1 through 3 and 11) and for specific surface area (e.g.,
appealed claim 16) fall within the ranges for the same variables in Goodboy. We know of no
authority which is contrary to the representative authority cited by appellants (brief, pages 12-
13), that is, there is no authority which holds that a broad prior art range that encompasses a
claimed range anticipates the claimed range as opposed to rendering such claimed subject matter
obvious. Cf. also In re Rainer, 377 F.2d 1006, 1010-11, 153 USPQ 802, 805-06 (CCPA 1967)
(“Criticality must be established before unobviousness can be predicted on the selection of a
temperature within the range disclosed by the reference.”). Indeed, in this case, we find no
teaching in Goodboy which clearly and unequivocally discloses the ranges of the rejected claims
per se or directs those of skill in the art to the claimed ranges per se without any need for
judicious picking and choosing. See generally, In re Arkley, 455 F.2d 586, 587, 172 USPQ 524,
526 (CCPA 1972) (“[F]or the instant rejection under 35 U.S.C. 102(e) to have been proper, the
. . . reference must clearly and unequivocally disclose the claimed compound or direct those
skilled in the art to the compound without any need for picking, choosing, and combining various
disclosures not directly related to each other by the teachings of the cited reference. Such picking
and choosing may be entirely proper in the making of a 103, obviousness rejection, where the
applicant must be afforded an opportunity to rebut with objective evidence any inference of
obviousness which may arise from the similarity of the subject matter which he claims to the
prior art, but it has no place in the making of a 102, anticipation rejection.”).
Accordingly, on the record now before us, we reverse the ground of rejection of appealed
claims 1 through 3, 7 and 11 through 21 under § 102(b) as being anticipated by Goodboy.
The examiner’s decision is reversed with respect to appealed claims 1 through 3, 7 and
11 through 21.
REMAND TO THE EXAMINER
The remaining two grounds of rejection under § 103(a) based on Goodboy as the primary
reference involve appealed claims 4 through 6, 8 through 10, 22 and 23, which are all of the
remaining appealed claims. It is apparent that the examiner states these grounds of rejection on
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