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
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