Ex parte Smith

Informative decision only: persuasive authority, not binding precedent. When a reference lists a long set of possible additives so that some picking and choosing is needed to arrive at the claimed specific compound, the reference does not anticipate under § 102(b) because it must "clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures." Separately, evidence of unexpected results cannot overcome a proper anticipation rejection, and in an obviousness rejection the appellant's unexpected-results showing must be actually unexpected and reasonably commensurate in scope with the claims. No prior Board precedent is named in the text as directly addressed on picking and choosing or unexpected results; the Board relies on CCPA and Federal Circuit authority and cites Ex parte Borden only on Reply Brief arguments. For an examiner, a § 102 rejection fails where the reference's long additive list requires picking and choosing to reach the claimed species, though the same picking and choosing may be proper in a § 103 rejection. For an appellant, that argument reversed the anticipation rejection of claims 4 and 5, but unexpected-results evidence did not defeat the anticipation of claims 1-3, 7, 8 and 10-14, and it failed against obviousness because it was neither unexpected nor commensurate in scope. The Board relied on In re Arkley, Atofina v. Great Lakes Chem. Corp., In re Schaumann, In re Malagari, In re Wiggins, In re Geisler, In re Harris and KSR. LEGAL TEST OR STANDARD: Anticipation: the reference "must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures" (In re Arkley), with each element described with sufficient specificity (Schaumann). A small, well delineated genus can anticipate a species (Schaumann; Petering). Unexpected results: the appellant bears the burden to show results that are actually unexpected and reasonably commensurate with the scope of protection sought by the claims. TRIGGERING FACTS: Bigorra Llosas listed a long set of possible additives, including stabilizers corresponding to the alkoxylate salt of claims 4 and 5, so some picking and choosing was needed, and the anticipation rejection of those claims was reversed. For claims 1-3, 7, 8 and 10-14, the Guerbet alcohol was selected from three options, so a composition with no oil was readily envisaged and the anticipation rejection was affirmed despite declarations asserting unexpected results. For obviousness, the showing was limited to specific compositions with 7% lecithin and 7% calcium stearate and was the expected additive effect, while the claims covered a myriad of phospholipids and alkoxylate salts in other amounts. KEY QUOTE: "Some picking and choosing of ingredients from the myriad of possible additives listed in Bigorra Llosas depending on the application of a nanoemulsion composition is necessary to arrive at a nanoemulsion composition containing the specific alkoxylate salt recited in claims 4 and 5." (p. 7) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The decision cites Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative), only for refusing new Reply Brief arguments absent good cause. PRACTICE TIP: Against an anticipation rejection that rests on a long list of options, argue that the reference requires picking and choosing and lacks sufficient specificity, rather than offering unexpected-results evidence, which is irrelevant to § 102. Against an obviousness rejection, tie any unexpected-results data to the full claim scope and to a comparison with the closest prior art.