Ex parte LARIVIERE - Page 6




          Appeal No. 96-0324                                                          
          Application 08/045,747                                                      



          As a consequence of our review, we have made the determination              
          that the examiner's respective rejections of claims 1 through 16            
          and 18 under 35 U.S.C.  102 and  103 will not be sustained.               
          Our reasons follow.  In addition, pursuant to our authority under           
          37 CFR  1.196(b), we have also decided to enter a new rejection            
          of appealed claims 7 and 8 under 35 U.S.C.  102(b)/103 based              
          on the Schwinn patent which is of record in the application.                


                    Like appellant (brief, pages 6-8), in reviewing the               
          examiner's rejection of claims 1, 2, 7 and 8 under 35 U.S.C.                
           102(b) based on Smith, we note that Smith clearly does not                
          include "tubular furcations" as required in independent claims 1            
          and 7.  The examiner's position (answer, page 9) that "[b]ecause            
          the disclosure of Smith is silent as to element 17, Smith is                
          capable of having a tubular configuration," and that appellant's            
          Jepson-format claim 1 "attests to the conventionality of tubular            
          furcations . . ." is of no moment given that the rejection under            
          review is based on anticipation under 35 U.S.C.  102(b) and                
          not obviousness under 35 U.S.C.  103.  An anticipation under               
          35 U.S.C.  102(b) is established only when a single prior art              
          reference discloses, either expressly or under principles of                


                                          6                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007