Appeal No. 1998-2337
Application 08/651,442
claim 6 is rejected under § 103 as being unpatentable over Blake in view of Riseman and Biles and
Stricker (id., page 7).3
We reverse.
Rather than reiterate the respective positions advanced by the examiner and appellants, we refer
to the examiner’s answer and supplemental answer, and to appellants’ brief, reply brief and
supplemental reply brief for a complete exposition thereof.
Opinion
It is well settled that the examiner has the burden of making out a prima facie case of
anticipation in the first instance by pointing out where each and every element of the claimed invention,
arranged as required by the claim, is described identically in the reference, either expressly or under the
principles of inherency. See generally, In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed.
Cir. 1986); Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730 F.2d
1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). Whether the examiner has done so in the ground
of rejection of claim 1 under § 102(b) as anticipated by Biles turns, of course, on the basic issues of the
interpretation of the claim term “a pH sensitive electrode” and the claim phrase “a potentiostatic unit for
maintaining said cathode at a constant potential versus said reference electrode whereby adjustments for
pH variations are automatically performed controlling said desilvering” in appealed claim 1 in light of the
written description in appellants’ specification as it would be interpreted by one of ordinary skill in this
art, see generally, In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997), In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994), and, as a
factual matter, the teachings and inferences that one of ordinary skill in this art would have found in the
disclosure of Biles, taking into account this person’s own knowledge of the particular art. See
generally, In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir. 1995); In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
In considering the disclosure of Biles, the definition of a term or the meaning of a phrase must be
construed within the context of this reference as interpreted by one of ordinary skill in this art. See
3 The examiner has withdrawn the grounds of rejection based on DeMeester et al. and Glenn et al.
(answer, page 3).
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