Appeal No. 2005-1459
Application No. 09/950,612
claimed “mixture of at least two inorganic metal oxides” as
required by claim 1 on appeal (id.). We agree.
Appellants argue that there is no recitation anywhere in the
specification of Robinson of “at least one” regarding the
abrasive metal oxides (Brief, page 9; Reply Brief, page 3).
Appellants further argue that claims 2 and 22 of Robinson, which
recite “at least one” of the metal oxide abrasives “and mixtures
thereof,” find no clear support and antecedent basis in the
specification of Robinson (Brief, page 10) and thus should have
been rejected on this basis (Reply Brief, page 4).
Appellants’ arguments are not persuasive. Under section
102(b), anticipation requires that the prior art reference
disclose, either expressly or under the principles of inherency,
every limitation of the claim. See In re King, 801 F.2d 1324,
1326, 231 USPQ 136, 138 (Fed. Cir. 1986). To be prior art under
section 102(b), a reference must be enabling, i.e., the reference
must put the anticipatory subject matter at issue into the
possession of the public through an enabling disclosure. See
Chester v. Miller, 906 F.2d 1574, 1576 n.2, 15 USPQ2d 1333, 1336
n.2 (Fed. Cir. 1990); In re Donohue, 766 F.2d 531, 533, 226 USPQ
619, 621 (Fed. Cir. 1985); In re LeGrice, 301 F.2d 929, 936, 133
USPQ 365, 371-72 (CCPA 1962). However, a U.S. Patent is presumed
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