Appeal No. 1997-0595 Page 8
Application No. 08/154,911
manner in which method claims 13 to 17 have been drafted to
refer back to apparatus claim 1 does not make the claims
indefinite. See Ex parte Porter, 25 USPQ2d 1144, 1147 (Bd.
Pat. App. & Int. 1992) and Manual of Patent Examining
Procedure (MPEP) (7th Ed., July 1998)
§§ 608.01(n) and 2173.05(f). Since claims 13 to 17 are
definite, the decision of the examiner to reject claims 13 to
17 under 35 U.S.C. § 112, second paragraph, is reversed.
The anticipation rejection
We sustain the rejection of claim 3 under 35 U.S.C. §
102(b) as being anticipated by Johnson.
Initially we note that anticipation by a prior art
reference does not require either the inventive concept of the
claimed subject matter or the recognition of 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). A prior art reference anticipates the subject of a
claim when the reference discloses every feature of the
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