Appeal No. 2003-0891
Application 09/011,614
either agree with the examiner’s contention with respect to the use of the term “about’ in the
reference, or to adjust the styrene copolymer molecule taught by the reference to one falling
within the appealed claims. Cf. In re Sebek, 465 F.2d 904, 907, 175 USPQ 93, 95 (CCPA 1972)
(“Where, as here, the prior art disclosure suggests the outer limits of the range of suitable values,
and that the optimum resides within that range, and where there are indications elsewhere that in
fact the optimum should be sought within that range, the determination of optimum values
outside that range may not be obvious.”); Titanium Metals Corp. v. Banner, 778 F.2d 775,782-
83, 227 USPQ 773, 779 (Fed. Cir. 1985). Accordingly, we reverse this ground of rejection.
The grounds of rejection 35 U.S.C. § 102(b) require that the examiner establish a prima
facie case of anticipation in the first instance by pointing out where each and every element of the
claimed invention, arranged as required by the claim, is described identically in a single applied
reference, either expressly or under the principles of inherency, in a manner sufficient to have
placed a person of ordinary skill in the art in possession thereof. See generally, Spada, 911
F.2d at 708, 15 USPQ2d at 1657. We could not conclude above that as a matter of law, the facts
in Imagawa and Motier would have suggested the subject matter of appealed claims 12 and 21
and appealed claims 30 through 34, respectively to one of ordinary skill in this art, and thus
cannot find as a matter of fact that these references would have described the subject matter
encompassed by the respective claims to one of ordinary skill in this art under this statutory
provision. We further cannot find that as a matter of fact the disclosure of Imagawa would have
described the subject matter encompassed by appealed claims 11, 14 through 20 and 22 through
29 because one of ordinary skill in this art would have to pick and choice among the components
and ranges disclosed in the reference to arrive at the claimed dispersions encompassed by these
claims. See In re Arkley, 455 F.2d 586, 587, 172 USPQ 524, 526 (CCPA 1972). We note here
that while we reach this determination with respect to § 102(b), Imagawa nonetheless applies
under § 103(a). See In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973)
(a reference that does not anticipate the claimed invention under § 102(b) can still be applied
thereto “as evidence of obviousness under § 103 for all it fairly suggests to one of ordinary skill
in the art”). Accordingly, we reverse this ground of rejection.
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