Ex Parte Williams et al - Page 3

                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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