Appeal No. 2006-2817 Page 7
Application No. 10/734,979
Example 5
Each of these compounds falls within the structure defined by Formula I and contains
“on average, five or more carbon atoms,” satisfying the requirements of claim 1. Since
each also contains more than six carbons on average, it is not necessary to consider
whether the proviso in claim 1 is also met that the compounds must be solid.
According to Appellants, Sadvary “provides no direction at all on how to select
those curing agents that will be acceptable in the present method from those that will
not be useful because of toxicity to aquatic life.” Brief, page 4. See also Reply brief,
page 2. Appellants appear to believe that it is necessary to choose the particular
triphenyl (C6) and triethylhexyl (C8) compounds from the prior art disclosure. We do not
agree. These compounds are expressly disclosed in Jacobs which is incorporated into
Sadvary for its teaching of triazine carbamoyls. No selection step is needed because
the compounds are pictured in the cited prior art, drawn out in black and white.
In Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1376, 77 USPQ2d
1321, 1326 (Fed. Cir. 2005), a species which was specifically disclosed in a prior art
reference was found to be anticipatory even though it appeared “without special
emphasis in a longer list.” Id. In response to arguments that this conclusion was
inconsistent with In re Baird, 16 F.3d 380, 393, 29 USPQ2d 1550, 1552 (Fed. Cir.
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