Appeal No. 2005-1101
Application No. 09/121,725
in the prior art of any value within the claimed range is anticipation of the claimed range.
See In re May, 574 F.2d 1082, 1089, 197 USPQ 601, 607 (CCPA 1978); In re
Wertheim, 541 F.2d 257, 267, 191 USPQ 90, 100 (CCPA 1976).
Appellant argues that the cited reference is “at least partially non-enabling” (Brief,
page 7). Appellant argues that, after numerous tests, it has been demonstrated that the
lower pressures stated in JP ‘156 do not open the oysters (Brief, page 7; Exhibits 1 and
2). Appellant asserts that there is no inherent disclosure of the invention where
experiments have revealed that the prior art did not consistently yield the claimed
invention (Reply Brief, page 2). Appellant challenges the operability of JP ‘156 by the
citation of later-published Japanese 2000-157157A (JP ‘157; Exhibit 3) and the
accompanying Table (Exhibit 4) and graph (Exhibit 5)(Brief, pages 9-10; Reply Brief,
page 4). Appellant argues that he had to perform numerous experiments, well beyond
the “undue experimentation” standard, in an effort to reproduce the results of oyster
shucking in JP ‘156 (Brief, page 11; Reply Brief, page 3).
Appellant’s arguments and evidence are not persuasive. Appellant is correct
that, to be prior art under section 102(b), a reference must be enabling. See In re
Donohue, 766 F.2d 531, 533, 226 USPQ 619, 621 (Fed. Cir. 1985). That is, the
reference must put the claimed invention in the hands of one skilled in the art. See In re
Donohue, 766 F.2d at 533, 226 USPQ at 621. The “claimed invention” in this appeal is
a process of treating raw oysters in a shell by use of high pressure for a specific time
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