Appeal No. 2004-1004
Application No. 10/011,074
expressly or inherently, every limitation of the invention
recited in appealed claim 1.
The appellant argues that Elges discloses “rubber [] only
in passing” and that “[t]here are numerous types of rubber,
including both flexible and inflexible rubbers.” (Reply brief
filed Dec. 22, 2003, page 5.) Furthermore, the appellant
contends that Elges teaches away from using a flexible rubber
and that a flexible rubber would render Elges’s lure inoperable.
(Id.)
We see no merit in the appellant’s arguments. Rubber is
one of only a few materials enumerated in Elges as suitable for
the lure body. Accordingly, Elges’s disclosure is sufficient to
anticipate appealed claim 1. 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.”).
Regarding the appellant’s argument on the flexibility or
inflexibility of the rubber, neither the express terms of
appealed claim 1 nor the description in the specification place
any limitation on the degree of flexibility of the lure body.
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