Appeal No. 2002-0426 Page 4
Application No. 09/115,797
separation distance determined for a range of ciguatoxin concentrations by ascending
chromatographic technique.”
On the surface, the examiner’s characterization of the ‘525 patent suggest that
each element of appellants’ claimed invention is taught by the ‘525 patent. However,
upon closer inspection we find that the elements disclosed in the ‘525 patent are not
arranged in the manner set forth in appellants’ claims. As appellants point out (Brief,
pages 9-10), ‘525 requires that the coated latex beads (plural detectors) be disposed on
a membrane, not in solution in a “second” container as required by the claims on
appeal. See e.g., ‘525, column 3, lines 38-39, “[t]he latex-antibody mixture is spotted on
a nylon membrane near the bottom end of a support”; and ‘525, claim 11, “[a] kit …
comprising: a support having a surface, a porous membrane provided on said surface,
first latex beads of a first color and first diameter and second latex beads of a second
color and second diameter being disposed at a common position on said membrane….”
In response to appellants’ argument the examiner argues (Answer, page 10),
“the claims drawn to the kit do not recite any details about the mode of bead
suspension….” To the contrary, appellants’ claims require that a suspension of plural
detectors (e.g., latex beads) be present in the second container. We remind the
examiner, “[u]nder 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, 1920 (Fed. Cir. 1989).
Since the examiner misinterpreted the claimed invention we are compelled
to vacate the rejection of claims 2-6, 8-17, 19, 22-26 and 33 under 35 U.S.C.
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