Appeal 2007-3547
Application 10/231,652
We affirm all of the stated rejections for substantially the reasons set
forth by the Examiner in the Answer and Final Office Action. We offer the
following for emphasis.
Appellants argue the rejected claims together as a group respecting
each of the separately stated rejections. Accordingly, we select claim 36 as
the representative claim on which we decide this appeal as to each of the
separate rejections before us.
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997);
accord Glaxo, Inc. v. Novopharm, Ltd., 52 F.3d 1043, 1047, 34 USPQ2d
1565, 1567 (Fed. Cir. 1995). However, anticipation by a prior art reference
does not require that the reference recognize either the inventive concept of
the claimed subject matter or the inherent properties that may be possessed
by the prior art reference. See Verdegaal Bros., Inc. v. Union Oil Co.,
814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied, 484 U.S.
827 (1987).
Anticipation under this section is a factual determination. See In re
Baxter Travenol Labs., 952 F.2d 388, 390, 21 USPQ2d 1281, 1283 (Fed.
Cir. 1991) (citing In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567
(Fed. Cir. 1990).
Respecting the first two rejections, the Examiner has determined that
Kadowaki and Taga each describe a composition that includes all of the
features required by representative claim 36 (Answer 3; Kadowaki, col. 2, l.
5 – col. 4, l. 18; Tada, 2-7). Appellants do not dispute that Kadowaki and
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