Appeal No. 1999-1716 Page 6
Application No. 08/888,005
located at the center of the joint. We therefore will not
sustain this rejection.
New Rejection Made By This Panel
of the Board of Patent Appeals and Interferences
While we concluded above that the manner in which the
examiner applied the teachings of the French reference in the
standing Section 102 rejection caused it not to be sustainable,
we nevertheless are of the opinion that this reference is
anticipatory of two of the claims. Therefore, pursuant to our
authority under 37 CFR § 1.196(b), we enter the following new
rejection:
Claims 13 and 25 are rejected under 35 U.S.C. § 102(b) as
being anticipated by French Patent No. 1177883.
In making this rejection, we point out that anticipation
does not require either the inventive concept of the claimed
subject matter or recognition of inherent properties that may
be possessed by the reference. See Verdegaal Brothers Inc. V.
Union Oil Co. Of California, 814 F.2d 628, 633, 2 USPQ2d 1051,
1054 (Fed. Cir. 1987). Nor does it require that the reference
teach what the applicant is claiming, but only that the claim
on appeal "read on" something disclosed in the reference, i.e.,
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007