Appeal No. 98-1233
Application No. 08/612,045
may be repaired and, upon the completion of repairs,
repositioning the collar in the valve (see page 1, lines 62-
78). In short, Carlson teaches providing two tools 23, 24 on
opposite sides of a "master key" 22 (see Fig. 4). There is
absolutely nothing in the combined teachings of Bergmann and
Carlson which would fairly suggest providing the plaster guard
of Bergmann with a tool portion in view of the teachings of
Carlson as the examiner proposes. Accordingly, we will not
sustain the rejection of claims 1-9 under 35 U.S.C. § 103(a)
as being unpatentable over Bergmann in view of Carlson.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejections.
Claims 1-3, 5 and 6 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Carlson. Initially we note that
anticipation by a prior art reference does not require either
the inventive concept of the claimed subject matter or the
recognition of inherent properties that may be possessed by
the prior art reference. See Verdegaal Bros., Inc. v. Union
Oil Co., 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.
1987), cert. denied, 484 U.S. 827 (1987). Additionally, the
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