reasoning that a rejection for anticipation is appropriate only if one reference "expressly incorporates a particular part" of another reference
How later courts described this case
- reasoning that a rejection for anticipation is appropriate only if one reference "expressly incorporates a particular part" of another reference
- disclosure of siloxane surfactant formula and statement that “[t]he above-described siloxane-oxlkylene block copolymers can be prepared in accordance with the procedures described and claimed in the copending application of D.L. Bailey and F.M. O'Connor, Serial No. 417,935,” found to convey to persons of skill in the art only that “Bailey taught now to make surfactants of this general type” and would not expressly indicate that Bailey’s other compounds could also be employed
- finding pending claims not anticipated by the purported combination reference
Written by the judges who cited it.
The opinion
*608 BALDWIN, Judge
(concurring).
While I adhere to the bulk of the court’s opinion, I wish to express my disagreement with that section which finds error in the rejection of claims 6, 20 and 23 (not reciting any catalyst) under 35 U.S.C. § 102 as anticipated by the Hos-tettler reference. I would affirm this rejection because I believe the whole of the Bailey disclosure relating to the preparation of siloxané-oxyalkylene block copolymers is incorporated by reference into Hostettler.
The logic of the majority approach fails, I believe, to take into consideration adequately the fact that, on this record, there is no reason to believe that one of ordinary skill, reading Hostettler’s disclosure, would know how to make any of the critical block copolymers. Accordingly, whether or not that mythical man would presume from Hostettler’s primary disclosure that mixtures of oxyal-kylenes in the copolymers were not contemplated, upon going to Bailey as instructed he would find out conclusively that such mixtures were also included. As the board here indicated, therefore, the effective disclosure of the Hostettler reference clearly includes utilization of the copolymer described in Example 1(a) of Bailey as the surfactant in the Hos-tettler process.