Appeal No. 2004-1178
Application No. 09/655,899
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.”).
Here, it is our judgment that the Examiner has engaged in “picking,
and choosing” in order to arrive at a conclusion of anticipation. In this
regard, we note that the cited prior art describes compositions that
comprise calcium sulfate hemihydrate, an emulsion polymer and water.
However, in order for Appellant’s invention to be anticipated by each of
the cited references, the Examiner must identify, in each reference,
disclosure that would have led a person of ordinary skill in the art to a
polymer having a Tg of less than about -40 oC. None of the cited references
describes the necessity to limit the polymer’s Tg to less than about -40 oC.
Consequently, for a person of ordinary skill in the art to arrive at a polymer
having a Tg of less than about -40 oC, one must select from the expansive list
of suitable monomers disclosed in each reference.
-5-
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007