Appeal No. 1996-3284
Application 08/154,864
rejection under 35 U.S.C. § 112, second paragraph. We find
that it is not possible to apply the prior art to claims 3 and
4 in deciding the question of anticipation under 35 U.S.C. §
102 without resorting to speculation and conjecture as to the
meaning of the questioned limitation in claim 3 or claim 4.
This being the case, we are therefore constrained to reverse
the examiner's rejection of claims 3 and 4 under 35 U.S.C. §
102 in light of the holding in In re Steele, 305 F.2d 859,
862, 134 USPQ 292, 295 (CCPA 1962). This reversal of the
Examiner's rejection is based only on the procedural ground
relating to the indefiniteness of these claims and therefore
is not a reversal based on the merits of the rejection.
As to claims 5 to 9, we treat them on the merits of the
applied prior art.
We note that a prior art reference anticipates the
subject of a claim when the reference discloses every feature
of the claimed invention, either explicitly or inherently (see
Hazani v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d
1358, 1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital
Data Sys, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984)).
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