Appeal No. 2005-2667
Application 08/943,125
United States Patent 5,534,304 (‘304 reference) and WO 93/18223 (‘223 reference)1, which are
in the same patent family (answer, pages 3-5 and 6-7).2,3
We refer to the answer and to the brief and reply brief for a complete exposition of the
positions advanced by the examiner and appellant.
It is well settled that the examiner has the burden of making out a prima facie case of
anticipation in the first instance by pointing out where each and every element of the claimed
invention, arranged as required by the claim, is described identically in a single reference, either
expressly or under the principles of inherency, in a manner sufficient to have placed a person of
ordinary skill in the art in possession thereof. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1657 (Fed. Cir. 1990). Whether the teachings and inferences that one skilled in this art
would have found in the disclosure of an applied reference would have placed this person in
possession of the claimed invention, taking into account this person’s own knowledge of the
particular art, is a question of fact. See generally, In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d
1697, 1701 (Fed. Cir. 1995), and cases cited therein (a reference anticipates the claimed method
if the step that is not disclosed therein “is within the knowledge of the skilled artisan.”); In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (“[I]n considering the disclosure of
a reference, it is proper to take into account not only specific teachings of the reference but also
the inferences which one skilled in the art would reasonably be expected to draw therefrom.”).
While it is entirely appropriate to rely on another reference to clarify a fact in the anticipating
reference, see generally, In re Samour, 571 F.2d 559, 562, 197 USPQ 1, 4 (CCPA 1978), the
supporting reference must in fact accomplish that purpose.
The principal issue in this ground of rejection is whether the lubricating compositions
1 The answer incorrectly identifies the ‘223 reference as “WO 93/18233.”
2 The examiner withdrew the ground of rejection of appealed claims 45 through 48, 51 through
54, 57 and 58 under 35 U.S.C. § 103(a) as being unpatentable over the Geursen et al. references
further in view of the admitted prior art and Sayad et al., set forth in the Office action mailed
May 24, 2002 (pages 5-7) and maintained in the Office action mailed December 18, 2003. The
examiner objected to these claims as containing allowable subject matter but dependent on a
rejected base claim (answer, page 2). We consider the ground of rejection under the judicially
created doctrine of obviousness type double patenting below.
3 Claims 43 through 48 are all of the claims in the application. See page 2 and the appendix of
the brief filed March 13, 2003, which we consider on appeal.
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