Appeal 2007-0499
Application 10/515,345
pigment preparations are either solid or liquid” while further asserting that
“[a]lthough the reference may allude to ’further evidence that the
preparations are in liquid form’, as argued by Appellants, the reference does
not clearly indicate that the preparations cannot be in any other form”
(Answer 8). Also, see Br. 5. The Examiner does not furnish a persuasive
basis for a determination that an implicit description of a solid pigment
preparation, as here claimed, can be derived from Gonzales-Blanco.
In this regard, the factual determination of anticipation requires the
disclosure in a single reference of every element of the claimed invention.
In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
Moreover, the Examiner has not established that Gonzales-Blanco describes
a pigment preparation that falls within the scope of appealed claim 1 with
regard to the surface active component requirements thereof. While picking
and choosing from among several optional surfactants and selecting an
amount thereof from those suggested by the broad disclosure and ranges of
dispersants disclosed by Gonzales-Blanco may have been obvious to one of
ordinary skill in the art within the meaning of 35 U.S.C. § 103(a), such
selection is not permissible in the context of an anticipation rejection. See
In re Arkley, 455 F.2d 586, 587, 172 USPQ 524, 526 (CCPA 1972).
On this record, even if the Examiner could have established that
Gonzales-Blanco (col. 8, ll. 26-32) describes a solid pigment/dispersant
intermediate preparation, as an option, in forming the final pigment
preparation, such would not have saved the Examiner’s anticipation
rejection because of the above-noted picking and choosing of the surface-
active additive(s) and amounts thereof relative to the pigment component
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