Appeal No. 1998-2337
Application 08/651,442
which it is attached would reasonably be interpreted by this person to be “a potentiostatic unit” arranged
as required by claim 1, either expressly or under the principles of inherency. The examiner’s allegation
that a “pH sensitive electrode” is used as a “pH electrode” in a number of instances and thus the
“common usage and meaning” of the latter term includes the former structure, made in response to
appellants’ arguments to the contrary, merely raises the possibility that Biles describes the specified “pH
sensitive electrode,” which, of course, is not sufficient to establish that such a description would
necessarily result from, that is, be inherent in, the disclosure of the reference. Oelrich, supra. In similar
respects, the examiner has not explained how the circuitry described by Biles is in fact identical to and
capable of performing the same function of automatically adjusting for pH variations as “a potentiostatic
unit” specified in claim 1.
Accordingly, we find that the examiner has not made out a prima facie case of anticipation of
the claimed apparatus encompassed by claim 1 under § 102(b) over Biles, and thus we reverse this
ground of rejection.
Turning now to the grounds of rejection under § 103, it is also well settled that a prima facie
case of obviousness is established by showing that some objective teaching, suggestion or motivation in
the applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill in
the art would have led that person to the claimed invention as a whole, including each and every
limitation of the claims, without recourse to the teachings in appellants’ disclosure. See generally, In re
Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co.
v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In
re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J.,
concurring); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In
re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). The examiner has
applied Biles in these grounds of rejection as if the reference would have reasonably disclosed an
apparatus containing “a pH sensitive electrode” as the reference electrode and “a potentiostatic unit”
arranged as required by claim 1 to one of ordinary skill in this art, which position is not established on
this record for the same reasons we discussed above. See generally In re Napier, 55 F.3d 610, 613,
34 USPQ2d 1782, 1784 (Fed. Cir. 1995), citing In re Grasselli, 713 F.2d 731, 739, 218 USPQ
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