Appeal No. 2004-1566
Application 09/452,982
reference, but there is simply no basis on which to apply this paragraph to Formula I” (brief, page
4).
In response, the examiner submits that Krull col. 4, lines 38-40, “states radical X is
derived from the reaction products of dicarboxylic anhydride groups (that came from maleic
anhydride) with . . . amines of the formula ENR3R4,” which formula includes the amines
specified in claim 42, as appellants admit (answer, pages 5-6). Thus, the examiner argues that, as
explained in this disclosure, Krull uses the primary amines depicted by the formula “to derivatize
the dicarboxylic anhydride groups of a polymer derived from dicarboxylic anhydride (e.g., maleic
anhydride) with an olefin” (answer, page 6).
It is well settled that the examiner has the burden of making out 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 the 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 In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1657 (Fed. Cir. 1990). Whether the teachings and inferences that one skilled in this art
would have found in the disclosure of an applied reference would have placed this person in
possession of the claimed invention, taking into account this person’s own knowledge of the
particular art, is a question of fact. See generally, In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d
1697, 1701 (Fed. Cir. 1995), and cases cited therein (a reference anticipates the claimed method
if the step that is not disclosed therein “is within the knowledge of the skilled artisan.”); In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (“[I]n considering the disclosure of
a reference, it is proper to take into account not only specific teachings of the reference but also
the inferences which one skilled in the art would reasonably be expected to draw therefrom.”).
We have carefully considered the portions of the references argued by the examiner and
appellants in the context of the disclosure of Krull as a whole. We find that, as a matter of fact,
one skilled in the art would have found that Krull discloses copolymers that can contain, inter
alia, the bivalent structural unit A which has the amine radicals “X” and “Y” (formula (A), col.
2, lines 45-51), wherein “Y is X or NRR3” and “X is,” inter alia, “NR3R4” (col. 3, lines 2 and 3),
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