Appeal 2007-1159
Application 09/839,946
The Examiner relies on the statements of Lee that in mammals, urate
oxidase is present in the liver, “is associated with the peroxisome and exists
as a tetramer with an apparent subunit size of 32,000 daltons,” (Lee, p. 1288)
and that “[p]orcine liver urate oxidase was obtained commercially and
purified to homogeneity” (id. at 1289) to support the assertion that 100% of
the uricase in Lee is in tetrameric form (Answer 9-10).
Appellants argue that the Examiner has taken the above two
referenced statements out of context to support the contention that Lee
discloses a mammalian uricase that is 100% in the tetrameric form (Reply
Br. 3-5). While we agree with Appellants, we still find that Lee anticipates
the subject matter of claim 50.
It is axiomatic that in order for a prior art reference to anticipate the
claimed invention, it must disclose every limitation of the claimed invention,
either explicitly or inherently. See In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1432 (Fed. Cir. 1997). We find that Lee, when read in light
of Appellants’ statement of the state of the prior art as set forth in the
Specification, anticipates the claimed subject matter of claim 50. Because
our reasoning differs from that of the Examiner, and Appellants have not had
a fair opportunity to respond to the rejection, we designate our affirmance as
a new ground of rejection. See In re Kronig, 539 F.2d 1300, 1302-03, 190
USPQ 425, 426-27 (CCPA 1976).
Our mandate is to give claims their broadest reasonable interpretation.
In re American Academy of Science Tech Center, 367 F.3d 1359, 1364, 70
USPQ2d 1827, 1830 (Fed. Cir. 2004). “An essential purpose of patent
examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be removed,
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