Appeal No. 2006-2393
Application 10/439,947
meaning containing at least - five specific ingredients.”); In re Baxter, 656 F.2d 679, 686-87,
210 USPQ 795, 802-03 (CCPA 1981) (“As long as one of the monomers in the reaction is
propylene, any other monomer may be present, because the term ‘comprises’ permits the
inclusion of other steps, elements, or materials.”). Thus, each prepaint comprises at least the
specified ingredient per se as well as any additional ingredients mixed therewith; the prepaints
in the set comprises at least the three specified prepaints and any number of additional
ingredients which, singularly or in admixture, constitute a prepaint ingredient; and the steps
comprise at least the three specified steps and any number of additional steps, including such
additional steps as those specified in independent claims 4 and 5.
Turning now to the rejections under § 102(b), 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 the 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, In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); Diversitech Corp. v.
Century Steps, Inc., 850 F.2d 675, 677-78, 7 USPQ 1315, 1317 (Fed. Cir. 1988); Lindemann
Maschinenfabrik GMBH v. American Hoist and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481,
485 (Fed. Cir. 1984). 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.”). It
is also well settled that in order to establish that a claim element is inherent in a prior art
reference, it must be established that such limitation is necessarily present in the description in
the reference and that it would be recognized as such by one of ordinary skill in the art, as “[t]he
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