Ex parte MILETI - Page 7




                Appeal No. 96-3885                                                                                                            
                Application No. 08/255,076                                                                                                    


                                                   NEW GROUNDS OF REJECTION                                                                   


                         Under the authority of 37 CFR  1.196(b), this panel of the                                                          
                board introduces the following new grounds of rejection. 5                                                                    


                         Claims 1 and 19 are rejected under 35 U.S.C.  102(b) as                                                             
                being anticipated by Waters.                                                                                                  


                                 Anticipation under 35 U.S.C. 102(b) is established                                                          
                only when a single prior art reference discloses, either                                                                      
                expressly or under principles of inherency, each and every                                                                    
                element of a claimed invention.  See In re Paulsen, 30 F.3d 1475,                                                             
                1478-1479, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994), In re Spada,                                                                
                911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990), and RCA                                                             
                Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444,                                                             
                221 USPQ 385, 388 (Fed. Cir. 1984).  However, the law of                                                                      
                anticipation does not require that the reference teach                                                                        
                specifically what an appellant has disclosed and is claiming but                                                              
                only that the claims on appeal "read on" something disclosed in                                                               
                the reference, i.e., all limitations of the claim are found in                                                                


                         5This panel of the board has considered appellant’s view of                                                          
                the Waters patent as expressed in the brief (pages 6 and 7).                                                                  
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