Appeal No. 2004-1876
Application No. 09/887,929
Furthermore, as in the case of In re Petering,
301 F.2d 676, 681, 133 USPQ 275, 279 (CCPA 1962), an
anticipation rejection is appropriate when the prior art
reference discloses a specific limited class. In the case
of In re Petering, that class contained 20 compounds, and
the court found this size of a class to aniticipate the
claimed subject matter. Here, both Mudge and Leighton each
discloses even a smaller class. That is, each of these
references discloses that the “[h]ydrophobic hydroperoxides
include, for example, tertiary butyl hydroperoxide,
tertiary amyl hydroperoxide, cumene hydroperoxide and the
like.” See column 5, lines 65 through 68 of Leighton and
see column 2, lines 3 through 6 of Mudge. Hence, as
concluded by the court in In re Petering, one skilled in
the art would, on reading the patent, “at once envisage
each member of this limited class, even though this skilled
person might not at once define in his mind the formal
boundaries of the class as we have done here.” 301 F.2d at
681, 133 USPQ at 280.
In view of the above, we therefore sustain the
examiner’s 35 U.S.C. § 102(b) rejection. Because this
rejection is under 35 U.S.C. § 102(b), we need not address
appellant’s comments regarding their samples 1 through 3
and comparative examples A through D. Such comparative
analysis is only useful for rebutting an obviousness
rejection, and not an anticipation rejection. See, In re
Papesch, 315 F.2d 381, 386-87, 137 USPQ 43, 47-48 (CCPA
1963).
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