Ex parte WARNER et al. - Page 16




          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.                 


                                          16                                          





Page:  Previous  8  9  10  11  12  13  14  15  16  17  18  19  20  21  22  Next 

Last modified: November 3, 2007