Appeal No. 2002-2209 Page 11
Application No. 08/137,168
requires. Thus, the statement set forth in Carroll in regard to blending several
monoseras in order to arrive at a polyspecific snake antivenom is entirely consistent
with other disclosures in the prior art, e.g., Christensen.
We recognize that the examiner’s rejection before us for review is premised upon
§ 103(a) of the statute, not § 102. However, it has been held that finding one of the
references relied upon by the examiner as evidence of obviousness is in fact an
anticipation of a claim “does not constitute a new ground of rejection; lack of novelty is
the epitome of obviousness.” In re May, 574 F.2d 1082, 1089, 197 USPQ 601, 607
(CCPA 1978). At the same time, we are aware that the CCPA subsequently stated that
use of such phrases as “anticipation is the epitome of obviousness” is “nothing more
than the recognition of the commonsense fact that a rejection for obviousness under §
103 can be based on a reference which happens to anticipate the claimed subject
matter. Those cases do not provide a license for the board to shift the statutory basis of
rejection from § 103 to § 102 while denying appellant the procedural due process
provided by 37 CFR 1.196(b).” In re Meyer, 599 F.2d 1026, 1031 n. 14, 202 USPQ 175,
179 n. 14 (CCPA 1979) (citations omitted).
The sole issue raised in the briefing in this appeal is directed to whether the
evidence based upon four specific venoms which won allowance of claims 39 through
41 is commensurate in scope with the claims which remain under rejection. This issue,
of course, presupposes that claim 37 is novel with the issue being one of obviousness.
As explained above, this is an incorrect assumption.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007