Appeal No. 2000-1747
Application No. 08/784,237
the written description and enablement requirements of
35 U.S.C. § 112, first paragraph. Accordingly, the examiner’s
rejections of claims 1 through 14 under 35 U.S.C. § 112, first
paragraph, are reversed.
B. The Rejections under 35 U.S.C. § 102(b)
Under 35 U.S.C. § 102(b), a rejection for anticipation
requires that the prior art reference disclose, either
expressly or inherently, every limitation of the claims. See
In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir.
1986). All claim limitations must be considered, including
the preamble of claims written in Jepson-type form. See Rowe
v. Dror, 112 F.3d 473, 479, 42 USPQ2d 1550, 1553 (Fed. Cir.
1997)(“the claim preamble defines not only the context of the
claimed invention, but also its scope”); and Pentec, Inc. v.
Graphic Controls Corp., 776 F.2d 309, 315, 227 USPQ 766, 770
(Fed. Cir. 1985)(“the claimed invention consists of the
preamble in combination with the improvement”). Thus even
though a Jepson-type claim results in an implied admission
that the preamble is conventional or known, the claim must be
considered as a whole.
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