Appeal 2007-2187
Application 10/148,793
A reference is anticipatory within the meaning of § 102 if it discloses
each and every claim limitation either expressly or inherently. In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950 (Fed. Cir. 1999);
In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1432 (Fed. Cir.
1997). We are in agreement with Appellants that Taniyama’s method does
not anticipate Appellants’ claimed method because Taniyama’s process
clearly requires a “lactide,” not a lactic acid oligomeric composition as
claimed. While it may be true that a lactic acid oligomeric composition is
inherently produced during the step of producing the lactide used in
Taniyama’s method, Taniyama does not expressly or inherently disclose the
use of such intermediate product in its method.2
Because the Examiner has failed to make a prima facie showing of
anticipation, the rejection of claims 11-25 and 28 under 35 U.S.C. § 102(b)
as anticipated by Taniyama, as evidenced by Okada, is reversed.
OTHER ISSUES
Although we have concluded that the Examiner’s rejection is not
sustainable under 35 U.S.C. § 102, the Examiner and Appellants should
consider whether claims 11-25 and 28 are patentable under 35 U.S.C. § 103
in view of the combined teachings of Taniyama and Okada.
REVERSED
2 In this regard, Appellants emphasize that a lactic acid oligomeric
composition would not be present in Okada’s final product, since “Okada
seeks to make lactide of the highest purity possible.” Appeal 5.
5
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