Appeal No. 2005-1332 Page 4
Application No. 09/774,064
Anticipation
We agree with Appellants that Hoshino does not disclose each and every limitation of
claim 1 with sufficient specificity such that the claimed composition is anticipated. In order to
anticipate, Hoshino must clearly and unequivocally disclose the claimed invention or direct those
skilled in the art to the invention 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). “Such 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 it has no
place in the making of a 102, anticipation rejection.” Arkley, 455 F.2d at 587-88, 172 USPQ at
526.
The Examiner’s finding of anticipation is based upon the disclosure in Hoshino of a
concentration of aqueous polymeric dispersion in the range of 3-30% as a preferred embodiment
coupled with a disclosure calcium carbonate in a list of six inorganic pigments. But Hoshino, in
fact, does not limit the inorganic pigments to the six compounds specifically recited. What
Hoshino states is that “[s]ome examples of the inorganic pigments include kaolin, calcium
carbonate, talc, satin white, titanium dioxide, etc.” Moreover, the only exemplified composition
contains an inorganic pigment mixture of 63 parts of kaolin clay with 27 parts of calcium
carbonate. Therefore, mixtures are also contemplated. One of ordinary skill in the art, in fact, is
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