Appeal No. 2006-1061
Application No. 09/505,713
We agree with Appellants that the Examiner has not established a
prima facie case of anticipation with respect to the subject matter of the
rejected claims. (Brief, p. 6). The Examiner acknowledges in the discussion of
the § 103 rejection that there must be some selection from the teachings of
Breitler to arrive at the claimed invention. (See Answer, p. 5). As such, Breitler
does not anticipate the claimed subject matter because it does not provide
a disclosure sufficiently specific to direct one skilled in the art to the claimed
combination without any need for picking and choosing. See In re Arkley,
455 F.2d 586, 589, 172 USPQ 524, 527 (CCPA 1972). Accordingly we determine
that the Examiner has not established a prima facie case of anticipation with
respect to the subject matter of claims 38-43.
However, our determination that the disclosure of Breitler does not
anticipate the subject matter of the claims does not preclude a finding that
the disclosure of Breitler would have rendered the subject matter of the
claims on appeal prima facie obvious under 35 U.S.C. § 103 (a). See Arkley,
supra.
Claims 38-53 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Breitler in view of Ullmann. We affirm the rejection
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