Appeal No. 1997-1793
Application No. 08/528,044
2. Whether JP 5-330,825 (JP ‘825), which is the
underlying patent identified in the Ishihara abstract,
qualifies as prior art under 35 U.S.C. § 102(a), taking into
account the appellants’ earliest U.S. filing date and claim
for priority under 35 U.S.C. § 119, and if so, whether claim
10 should be rejected under 35 U.S.C. § 102(a) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over JP ‘825.
1. The Hattori Reference:
“To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either
explicitly or inherently.” In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)); accord Glaxo
Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047, 34 USPQ2d 1565,
1567 (Fed. Cir. 1995). For a product claim, however, the mere
fact that a prior art product is made by a process different
from that recited in the claim does not, in and of itself,
defeat an anticipation rejection over the prior art product.
In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985)(“If the product in a product-by-process claim is the
same as or obvious from a product of the prior art, the claim
11
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007