Ex parte MICHAEL E. MILLER et al. - Page 3




          Appeal No. 96-2294                                                          
          Application 08/278,558                                                      


          Hayafuji et al. (Hayafuji)    5,106,364    Apr. 21, 1992                    
               The examiner has rejected claims 1 through 8 and 10 to 12              
          under 35 U.S.C.  102(b) as anticipated by Hayafuji.  According             
          to the examiner, Hayafuji in Figure 14 discloses the claimed                
          invention.                                                                  
               Pursuant to 37 CFR  1.192(c)(7), the appellant states that            
          the claims are to stand and fall in two groups.  Group 1 consists           
          of claims 1 through 8 and Group 2 consists of claims 10 to 12.              
          Accordingly, we will limit our consideration to claims 1 and 10.            
                                       OPINION                                        
               We have carefully reviewed the rejection on appeal in light            
          of the arguments of the appellants and the examiner.  As a result           
          of this review, we have determined that the claims on appeal are            
          not anticipated by the Hayafuji reference.  Therefore, the                  
          rejection of the claims on appeal will be reversed.                         
          Additionally, pursuant to 37 CFR  1.196(b), this Board enters a            
          rejection of claims 10 through 12 under 35 U.S.C.  112, second             
          paragraph.                                                                  
               The inherent teaching of a prior art reference, a question             
          of fact, arises both in the context of anticipation and                     
          obviousness.  See In re Grasselli, 713 F.2d 731, 739, 218 USPQ              
          769, 775 (Fed. Cir. 1983).  In relying upon the theory of                   

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