Appeal No. 96-3885
Application No. 08/255,076
NEW GROUNDS OF REJECTION
Under the authority of 37 CFR § 1.196(b), this panel of the
board introduces the following new grounds of rejection. 5
Claims 1 and 19 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Waters.
Anticipation under 35 U.S.C. §102(b) is established
only when a single prior art reference discloses, either
expressly or under principles of inherency, each and every
element of a claimed invention. See In re Paulsen, 30 F.3d 1475,
1478-1479, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994), In re Spada,
911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990), and RCA
Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984). However, the law of
anticipation does not require that the reference teach
specifically what an appellant has disclosed and is claiming but
only that the claims on appeal "read on" something disclosed in
the reference, i.e., all limitations of the claim are found in
5This panel of the board has considered appellant’s view of
the Waters patent as expressed in the brief (pages 6 and 7).
7
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