Appeal 2007-1943
Application 10/443,649
reduced, whatever level of aromatic polycyclic hydrocarbons existed in the
initial decant oil to a significant degree.7
Discussion
To anticipate in terms of 35 U.S.C. § 102, a single prior art reference
must describe every element of the claimed subject matter. In re Bond, 910
F.2d 831, 832, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990); Diversitech Corp.
v. Century Steps, Inc., 850 F.2d 675, 677, 7 USPQ2d 1315, 1317 (Fed. Cir.
1988). To establish the obviousness of the claimed subject matter under 35
U.S.C. § 103 in view of prior art teachings, all the claim limitations must be
taught or suggested by the prior art. In re Royka, 490 F.2d 981, 985, 180
USPQ 580, 583 (CCPA 1974). In this case, however, we need not find that
Didchenko expressly or explicitly describes every limitation of the subject
matter Appellants claim to affirm the Examiner’s rejection of the claimed
subject matter under 35 U.S.C. § 102(b) as anticipated by Didchenko, or
under 35 U.S.C. § 103 for obviousness in view of Didchenko’s teaching.
Anticipation can be found over, and a prima facie case of obviousness can
be established in view of, a single prior art reference which reasonably
appears to inherently or otherwise implicitly describe all the claim
limitations and thus reasonably suggest the claimed subject matter to a
person having ordinary skill in the art.
Appellants understood that the Examiner was attempting to establish
low PAH inherency based on similarities between the subject matter
Appellants claim and the low sulfur pitch feedstock produced by Didchenko
7 We repeat our conclusion that Appellants’ claims do not require the
presence of significant amounts of PAH in the high sulfur initial decant oils.
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