Appeal No. 2004-1856
Application No. 09/908,413
porous overcoat (i.e., to thereby yield a “layer formed in pores
of the porous overcoat in direct contact with the base coat” as
required by the independent claim on appeal). Instead,
patentee’s catalytic layer is disclosed as spaced from (rather
than in direct contact with) his measuring electrode (i.e.,
electrically conductive base coat) via a porous spacer layer and
is disclosed as being printed on this porous spacer layer (rather
than formed in pores of the porous overcoat as here claimed). In
this latter regard, see the paragraph bridging columns 8 and 9,
lines 30-44 in column 9 and example 3 of the Kurachi patent.
Under the circumstances recounted above, it is apparent that
the examiner, in reaching her finding of anticipation, has
selectively picked Kurachi’s disclosure of a prior art invention
in the paragraph bridging columns 2 and 3 and combined it with
patentee’s figure 2 disclosure of his own invention. This is
inappropriate. For this Section 102 rejection to be proper, the
Kurachi patent must clearly and unequivocally disclose the
here claimed coated structure or direct those skilled in the art
to this coated structure without any need for picking, choosing,
and combining various disclosures not directly related to each
other by the teachings of the patent. See In re Arkley, 455
F.2d 586, 587-88, 172 USPQ 524, 526 (CCPA 1972). As earlier
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