Appeal No. 2003-2091 Page 7
Application No. 09/266,465
It is true that all of the elements of the claimed product are encompassed by the
genera described in Zhang. However, when a claimed product is not specifically
described in a reference, but must be derived by choosing and combining different
elements that are separately disclosed, the proper basis for rejection (if any) is 35
U.S.C. § 103.
In response to Appellants’ argument on this point, the examiner cited guidance
from the MPEP to the effect that a claimed product can be anticipated by a prior art
reference, even if it is necessary to select portions of the reference and combine them,
so long as the classes from which the selections are made are “sufficiently limited or
well delineated.” Examiner’s Answer, page 6 (citing MPEP § 2131.02). The examiner
also relied on the MPEP for the following proposition:
If one of ordinary skill in the art is able to “at once envisage” the specific
[claimed] compound within the generic [known] chemical formula, the
compound is anticipated. One of ordinary skill in the art must be able to
draw the structural formula or write the name of each of the compounds
included in the generic formula before any of the compounds can be “at
once envisaged.”
Id. (citing In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962)).
The examiner argues that this passage from the MPEP supports the rejection
because “one of ordinary skill could write out the combinations of promoters and genes;
indeed, many different combinations of the promoters and Bcl-2 transgenes disclosed in
the ‘191 patent would anticipate the claimed invention. For example, in claims reciting
any [non-adenoviral] inducible promoter . . . many of the 17 inducible promoters listed in
Table 3 . . . and several of the promoters listed in Table 2 . . . combined with any of the
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