Appeal No. 1996-2795
Application No. 08/430,155
To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either
expressly or inherently. See Glaxo Inc. v. Novopharm Ltd., 52
F.3d 1043, 1047, 34 USPQ2d 1565, 1567 (Fed. Cir. 1995).
With respect to claim 2, appellants argue (Brief, page
10) that Krempl "does not disclose a support means which
includes two separate means for receiving different spaced
apart portions of a conduit which allow the conduit support
means to have a loop of conduit extending from it to cooperate
with a peristaltic pump." Krempl does not disclose a pump of
any kind, and the examiner has not addressed the lack of such
a teaching in Krempl. Thus, the 35 U.S.C. § 102(b) rejection
of claims 2 through 5 is reversed because every limitation of
the claimed invention is not taught by Krempl.3
3Even if a pump was disclosed by Krempl, we would still
have to reverse the prior art rejection of claims 2 through 5
because the word "may" conveys to the reader that claim 2 does
not positively include a loop of conduit extending from the
conduit support means or a peristaltic pump. Inasmuch as we
are not able to determine whether or not the loop of conduit
and the pump are in a cooperative relationship with the
sensor, we are not able to determine the metes and bounds of
the claimed invention. A prior art rejection should be
reversed when resort to speculation and assumptions are
necessary to apply the prior art to limitations of the claim.
See In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295
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