Appeal No. 2004-2339 Page 3
Application No. 09/900,596
specified (Table 2). Waxes are disclosed (Table 1). 30% butyl carbitol
is specified (Table 3).
As to the claimed properties, the anticipatory compositions must
possess them because it is the same composition as that claimed.
Office Action, Paper No. 7, page 3.
First, the examiner has not identified which components described in Freiesleben
are considered to be the first, second, and third components required by claim 1 on
appeal. More problematic, however, is the failure of the examiner to point to any
specific disclosure in Freiesleben that describes a composition meeting the
requirements of the claims. Instead the examiner has merely pointed to isolated
disclosures in Freiesleben describing certain compounds.
For the present rejection under 35 U.S.C. § 102(b) to be proper, Freiesleben
“must clearly and unequivocally disclose the claimed [composition] or direct those
skilled in the art to the [composition] without any need for picking, 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)
The court went on to state “[s]uch picking and choosing may be entirely proper in the
making of a 103, obviousness rejection, where the applicant must be afforded an
opportunity to rebut with objective evidence any inference of obviousness which may
arise from the similarity of the subject matter which he claims to the prior art, but has no
place in the making of a 102, anticipation rejection.” Id.
Absent a clearer explanation from the examiner as to how Freiesleben identically
discloses a composition in accordance with claim 1 on appeal, we cannot say that the
examiner has made out a prima facie case of anticipation.
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007