Appeal No. 2006-2810 Page 8
Application No. 10/618,111
Such a broad, omnibus statement certainly can’t be taken at face value. It cannot
be enabling. Elan Pharm., Inc. v. Mayo Foundation for Medical and Education
Research, 346 F.3d 1051, 1054, 68 USPQ2d 1373, 1376 (Fed. Cir. 2003), states
that a reference must be enabling and that mere naming is insufficient if it cannot
be produced without undue experimentation.
Id.
We do not find Appellants’ argument persuasive. As pointed out by the
examiner, the Elan case was referring to the requirements for anticipation, not
obviousness. “To serve as an anticipating reference, the reference must enable that
which it is asserted to anticipate.” Elan, 346 F.3d at 1054, 68 USPQ2d at 1375. For
obviousness, it is the combination of references which must “enable” the claimed
subject matter. In this context, we are persuaded by the examiner’s argument that
applying the method taught by Cook to the LCT resin of Smith would enable one of
ordinary skill in the art to produce a resin with the claimed properties. Appellant has not
identified a deficiency in the cited prior art that would have resulted in failure.
It was also argued by Appellant that “LCT resins were not commercially available
resins at the time of Cook.” Brief, page 5, ii. Appellant has misidentified the relevant
time frame for determining patentability. According to 35 U.S.C. § 103(a): “A patent
may not be obtained though the invention is not identically disclosed or described as set
forth in section 102 of this title, if the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a whole would have
been obvious at the time the invention was made to a person having ordinary skill in the
art . . .” (emphasis added.) The question is more properly whether the resins were
available on the application filing date, not “at the time of Cook.” The answer is
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