Appeal No. 2002-2057
Application No. 09/351,147
We reverse these rejections for the reasons well stated in
the appeal brief filed Mar. 25, 2002 (paper 22) and reply brief
filed Jul. 24, 2002 (paper 24), but add the following comments
for emphasis only.
I. Rejection under 35 U.S.C. § 102: EP ’736
“To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997); accord Glaxo Inc. v. Novopharm
Ltd., 52 F.3d 1043, 1047, 34 USPQ2d 1565, 1567 (Fed. Cir. 1995).
In addition, the prior art reference must disclose the
limitations of the claimed 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, 172 USPQ 524, 526
(CCPA 1972); cf. In re Schaumann, 572 F.2d 312, 315, 316, 197
USPQ 5, 8, 9 (CCPA 1978)(holding that “the disclosure of a
chemical genus...constitute[s] a description of a specific
compound” within the meaning of §102 where the specific compound
falls within a genus of a “very limited number of compounds.”).
As argued in the appellants’ principal brief (page 4), “the
reference’s teaching that phosphorus oxide-free zeolites can be
used does not necessarily imply that phosphorus oxide-containing
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