Appeal 2007-1205
Application 10/501,343
Here, the Examiner has not pointed out where in Gonzales-Blanco an
anticipatory description of a solid pigment preparation that includes all of
the above-identified claim features is provided. 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). While picking and choosing from
among several options specific surfactants and amounts thereof based on the
broad disclosure of Gonzales-Blanco would 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 we found that Gonzales-Blanco discloses a
solid pigment preparation intermediate as an option in forming the final
pigment preparation (col. 8, ll. 26-32), such would not have saved the
Examiner’s anticipation rejection because of the above-noted picking and
choosing of the surface-active additives and amounts thereof that is required
in order to arrive at subject matter on which independent appealed claim 1
would read.
Accordingly, we reverse the anticipation rejection before us.
Turning to the Examiner’s obviousness rejection of dependent claims
6 and 11, the Examiner relies on Gonzales-Blanco for the reasons set forth in
the anticipation rejection. The Examiner does not otherwise explain why
one of ordinary skill in the art would have found a teaching or suggestion of
a pigment preparation corresponding to the independent claim 1 features in
Gonzales-Blanco. Nor has the Examiner proffered any other logical reason
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