Appeal No. 2005-0191
Application No. 09/971,239
hydrolyzed from about 45% to 90%, Kochan’s starches are hydrolyzed to the claimed
‘oil absorption maximum hydrolysis level’ as recited in”
claim 1. Id.
The examiner argues that, alternatively, representative claim 1 would have been
obvious to one of ordinary skill in the art in view of the teachings of Kochan. Answer,
p. 6. The examiner contends that the starch product disclosed in the applied prior art is
“only nominally different” from those recited in the claim and, therefore, such disclosure
[of Kochan’s product] “clearly provides a reasonable expectation that the claimed
products would function as body dusting powders according to the disclosure of
Kochan.” Id.
We find these arguments unpersuasive.
Turning first to the issue of anticipation, we point out that it is well established
that anticipation requires that each and every limitation set forth in a claim be present,
either expressly or inherently, in a single prior art reference. In re Robertson, 169 F.3d
743, 745, 49 USPQ2d 1949, 1950 (Fed. Cir. 1999); Celeritas Techs. Ltd v. Rockwell Int’l
Corp., 150 F.3d 1354, 1360, 47 USPQ2d 1516, 1522 (Fed. Cir. 1998); Verdegaal Bros.,
Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987);
Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730 F.2d 1452,
1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
We appreciate the examiner’s concern with respect to the teachings of the
specification that the optimum oil absorption hydrolysis level may encompass granular
starch wherein hydrolysis has been terminated in a range from about 30% to about 60%
6
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