Appeal No. 2002-1644 Page 7
Application No. 08/602,498
the “sales” were for experimental purposes to further refine the claimed
invention. Therefore, we find that the examiner has not provided the evidence
necessary to meet the first part of the Pfaff test. Accordingly, we do not consider
the second part of the Pfaff test. Having found that the “sales” fall within the
experimental-use exception of 35 U.S.C. § 102(b), we reverse the rejection of
claims 14-16 and 21-24 under 35 U.S.C. § 102(b) in view of the commercial sale
of DX-206.
Kabara:
“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). Furthermore, an
anticipatory reference must unequivocally disclose the claimed method or direct
those skilled in the art to the method 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 35 U.S.C. §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 35 U.S.C. §102,
anticipation rejection. See In re Arkley, 455 F.2d 586, 587, 172 USPQ 524, 526
(CCPA 1972).
As appellants explain (Brief, page 13),
[w]hile it is disclosed that certain of the compositions can be used
as bovine teat dips, … [Kabara] discloses that its various
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