Appeal No. 2005-2667
Application 08/943,125
Appellant points out in the reply brief that “neither[the Geursen references] nor Arroyo
claim that the ARIDALLTM 1125F disclosed in Arroyo can absorb greater than 100 times its
weight in water,” and that this material is not disclosed in his specification (pages 3-4).
Appellant states that “an internet search” did not “find” this material (id., page 3).
On this record, we agree with appellant that the examiner has not identified any evidence
in the Geursen references and Arroyo which support the ground of rejection. In order to
factually support the ground of rejection, the examiner must establish as a matter of fact that at
least one superabsorbent material in the references met the subject claim limitations in the
appealed claims. This cannot be accomplished by combining a disclosed general range of
absorbent values of superabsorbent materials which overlaps the claimed absorbent range of
“greater than about 100 times its weight in water,” with a particular superabsorbent material, and
especially since there is no disclosure in any of the references or in appellant’s specification
which would place the particular species within the claimed absorbent range, either expressly or
under the principles of inherency. See Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775,
780, 227 USPQ 773, 777 (Fed. Cir. 1985) (“[A]nticipation under § 102 can be found only
when the reference discloses exactly what is claimed.”). Therefore, the examiner has not
established a prima facie case of anticipation under 35 U.S.C. § 102(b) as a matter of fact and
accordingly, we reverse this ground of rejection.
Other Issues
Upon further consideration of the appealed claims by the examiner subsequent to the
disposition of this appeal, the examiner should consider whether the Geursen references alone
(see, e.g., Geursen ‘223, page 5, l. 19, to page 6, l. 32, and page 12, l. 18, to page 13, l. 3), or
together with appellant’s admissions in the specification (page 21, l. 1, to page 23, l. 4), which
suggest that superabsorbent materials that absorb greater than about 100 times their weight in
water were known, affect the patentability of the claimed invention under 35 U.S.C. § 103(a).
REMAND TO THE EXAMINER
We remand the application to the examiner for consideration and explanation of issues
raised by the record. 37 CFR §1.41.50(a)(1) (2005); Manual of Patent Examining Procedure
(MPEP) § 1211 (8th ed., Rev. 2, May 2004; 1200-29 – 1200-30).
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