Appeal No. 2006-0295
Application 10/053,926
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).
Whether a reference provides clear and unequivocal direction to the claimed invention is
determined on the total circumstances with respect to the disclosure of the reference, see In re
Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962), including “not only specific
teachings of the reference but also the inferences which one skilled in the art would reasonably
be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA
1968); see also 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.”). Such direction is provided to one
skilled in the art where the totality of the reference provides a “pattern of preferences” which
describes the claimed invention without the necessity for judicious selection from various
disclosures thereof. See In re Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982)
(“[T]he fact remains that one of ordinary skill informed by the teachings of [the reference] would
not have had to choose judiciously from a genus of possible combinations of resin and salt to
obtain the very subject matter to which appellant’s composition per se claims are directed.”);
In re Schaumann, 572 F.2d 312, 316-17, 197 USPQ 5, 9-10 (CCPA 1978); Petering, 301 F.2d at
681-82, 133 USPQ at 279-80. The claimed range with respect to a particular property
characterizing a product must be specifically described in a reference in order for the product or
a process utilizing that product to be identically described within the meaning of § 102(b) where
the reference does not otherwise disclose a species falling within the range. Cf. 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 and that where there are differences between the reference disclosure and the claim, the
rejection must be based on § 103 which takes differences into account. D Chisum, Patents
§ 3.02.”).
The examiner sets forth in the Office action with respect to claims 9 and 19, only that
Eden, at col. 6, ll. 46-50, and col. 8, ll. 50-65, “discloses a composition including water, a
confectionery ingredient and sago starch having a water fluidity (WF) from 10-75” (page 2).
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