Appeal 2007-4316
Application 09/911,268
28. Moreover, the Examiner points out that the Eckel declaration did not
show that the Eckel 930 D.1 phosphorus compound contained less
than 1 w% IPP. (Id.)
C. Discussion
"A claim is anticipated if each and every limitation is found either
expressly or inherently in a single prior art reference." Bristol-Myers Squibb
Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1374, 58 USPQ2d 1508, 1512
(Fed. Cir. 2001). "In general, a limitation or the entire invention is inherent
and in the public domain if it is the 'natural result flowing from' the explicit
disclosure of the prior art." Schering Corp. v. Geneva Pharm., Inc., 339
F.3d 1373, 1379 (Fed. Cir. 2003).
“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1658 (Fed. Cir. 1990). Our reviewing court has long accepted the
practice of making rejections under § 102 or § 103 in the alternative as long
as the applicant is fully apprised of the grounds of rejection. Id. at 708 n.2,
15 USPQ2d at 1658 n.2.
Obviousness is a legal conclusion based on underlying findings of
fact. In re Gartside, 203 F.3d 1305, 1316, 53 USPQ2d 1769, 1778 (Fed.
Cir. 2000). It follows that if a limitation of a claim is neither met nor
suggested by the prior art, the conclusion of obviousness cannot stand.
Applicants have chosen to attack only the critical part of the
Examiner's rejections, i.e., the Examiner's findings that the disclosures of a
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: September 9, 2013