Appeal 2007-3196
Application 10/461,774
adsorbing surface of the adsorbent (5)” encompassed by claim 1 at the time
the Application was filed. See, e.g., In re Alton, 76 F.3d 1168, at 1175-76,
37 USPQ2d at 1581, 1583-584 (Fed. Cir. 1996) (citing Wertheim, 541 F.2d
at 262-64, 191 USPQ at 96-97).
Therefore, we affirm the ground of rejection of claims 1 through 25
under 35 U.S.C. § 112, first paragraph, written description requirement.
Turning now to the ground of rejection under § 102(e), we initially
point out that the language of claim 1 must be considered vis-à-vis the
disclosure of Nussbaumer, regardless of the Examiner’s view thereof based
on the disclosure in the Specification. Answer, e.g., 8 and 13; Reply Br. 6.
Indeed, claims are considered with respect to all of the limitations thereof
regardless of whether a limitation is not supported by the specification as
filed. Cf. Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem.,
738 F.2d 453 (Fed. Cir 1984). Thus, Nussbaumer must describe a process
using an apparatus which provides for flow of adsorbate-containing medium
“only tangentially” over the entire outer adsorbing surface of an adsorbent
material as claimed to establish anticipation within the meaning of § 102(e).
See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431
(Fed. Cir. 1997) (“To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or inherently.”).
We agree with Appellants that the reference describes flow permeating
through the adsorbent membrane and the Examiner has not established
otherwise by pointing to “cross-flow” wherein part of the medium “flows
through the adsorbent.” Nussbaumer col. 8, ll. 13-27; Answer 7-9 and
12-14; Br., e.g., 7-8.
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