Appeal No. 95-2440
Application 07/705,726
examiner has not made any findings of fact as to whether the
terms in question are described by the original disclosure as
indicated supra. Absent such a determination, the examiner
could not have taken into account the application disclosure
in assessing the definiteness of the terms in question.
Upon return of this application, the examiner is to
reconsider the entire merits of this rejection, taking into
account descriptive support in the original disclosure, as
well as prior art teachings.
PRIOR ART REJECTION UNDER § 102
Anticipation under Section 102 is a factual
determination. In re Baxter Travenol Labs., 952 F.2d 388,
390, 21 USPQ2d 1281, 1283 (Fed. Cir. 1991) citing In re Bond,
910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990).
Anticipation requires prior art to describe, either expressly
or under the principles of inherency, each and every element
set forth in the claims. See, e.g., RCA Corp. v. Applied
Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir. 1984). The term "prior art" includes an
appellants' admission of prior art in a patent application.
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