Appeal 2006-2468
Application 10/149,875
Judge TIMM, with whom Judge GARRIS joins, concurring.
§ 102(b) REJECTION
While the facts herein support an ultimate conclusion of obviousness
under the requirements of 35 U.S.C. § 103(a), a majority of the members of
this panel agree that the facts do not support a finding of anticipation under
35 U.S.C. § 102.
The difference in the statutory basis for the rejection can, in some
instances, be an important one. A rejection under 35 U.S.C. § 103(a) can be
overcome by a showing of secondary considerations such as a showing of
unexpected results whereas a proper rejection under 35 U.S.C. § 102 cannot.
See In re Malagari, 499 F.2d 1297, 1303, 182 U.S.P.Q. 549, 553 (C.C.P.A.
1974)(“If the rejection under § 102 is proper, however, appellant cannot
overcome it by showing such unexpected results or teaching away in the art,
which are relevant only to an obviousness rejection.”).5
The determination of anticipation is fact dependent and must be
determined on a case-by-case basis. There is no question that Seiden would
anticipate if the reference contained a working example of the reduced
5 Due to the deficiencies in the showing of unexpected results discussed
above, we do not herein consider the question of whether evidence of
unexpected results within the claimed range can be used to show that the
Section 102 rejection is improper on the basis that the narrow range is not
disclosed with ‘sufficient specificity’ to constitute an anticipation of the
claimed subject matter as advanced by Appellants in reliance on MPEP
§ 2131.03. This is because we need not reach this question on the present
facts.
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