Ex parte LOMMASSON - Page 5




          Appeal No. 2000-0310                                                        
          Application 08/848,759                                                      


          outside o-ring 52.  Although this figure is merely an                       
          embodiment of the claimed invention, there is nothing in the                
          specification which indicates that “gripped” in the                         
          appellant’s claims is to be interpreted more broadly than                   
          meaning that the insulator ring is grasped by the first and                 
          second threaded inserts themselves.                                         
               Because Cheng does not disclose an insulator ring which                
          is gripped, as that term is used by the appellant, by first                 
          and second threaded inserts, the reference does not anticipate              
          the claimed invention.  See Scripps Clinic & Research Found.                
          v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010                
          (Fed. Cir. 1991) (In order for a claimed invention to be                    
          anticipated under 35 U.S.C. § 102(b), all of the elements of                
          the claim must be found in one reference).  Consequently, we                
          reverse the rejection under 35 U.S.C. § 102(e).  Also, because              
          the examiner has provided no explanation as to why one of                   
          ordinary skill in the art would have modified Cheng such that               
          an insulator ring is gripped by first and second threaded                   
          inserts, we reverse the rejection under 35 U.S.C. § 103.                    
                                      DECISION                                        


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