Appeal No. 2006-0313
Application 10/300,276
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 generally, Spada, 911 F.2d at 708, 15
USPQ2d at 1657. It is further well settled that if a reference does not disclose a specific
embodiment which satisfies all of the claim limitations, the reference will nonetheless describe
the claimed invention within the meaning of § 102 if it “clearly and unequivocally . . . [directs]
those skilled in the art to [the claimed invention] without any need for picking, 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 examiner finds that the disclosure of Dubin at col. 4, ll. 20-35, and col. 5, l. 12, to
col. 6, l. 33, describes to one skilled in this art compositions that fall within appealed claim 1.
Appellants contend that plating solutions taught by Dubin can include chelating agents and
Station, NJ, Merck & Co., Inc., 1996).
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007