Appeal 2007-3387
Application 10/307,027
The Appellants appeal from the Examiner’s decision rejecting the
claims on appeal under 35 U.S.C. §§ 102(b) and 103(a).
ISSUES
1. Does Konagaya unequivocally teach each and every limitation
of the claimed invention without need for picking, choosing, and combining
various disclosures therein within the meaning of 35 U.S.C. § 102(b)?
2. Would Konagaya have suggested including in its antibacterial
composition freed of alkali metal halides at least one polyurethane binder
material prior to applying them on a fabric substrate within the meaning of
35 U.S.C. § 103(a)?
PRINCIPLES OF LAW, FACTUAL FINDINGS, and ANALYSES
ANTICIPATION
To establish anticipation under 35 U.S.C. § 102(b), a single prior art
reference must unequivocally disclose the claimed invention without any
need for picking, choosing, and combining various disclosures therein. In re
Arkley, 455 F. 2d 586, 587, 172 USPQ 524, 526 (CCPA 1972).
As explained in the discussion of the Examiner’s § 103 rejection
below, we determine that some picking, choosing, and combining various
disclosures of Konagaya is necessary to arrive at the claimed subject matter.
Although such picking, choosing, and combining may be entirely proper in
making a § 103(a) rejection, it has no place in the making of a § 102(b)
rejection. Arkley, 455 F.2d at 587, 172 USPQ at 526.
Accordingly, we are constrained to reverse the Examiner’s decision
rejecting the claims on appeal under 35 U.S.C. § 102(b).
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