Appeal No. 2000-1862
Application 08/834,061
7, 9 through 15 and 37 under 35 U.S.C. § 102(b) as being anticipated by Xu.
Appellant states in the brief (page 3) that appealed claims 2 through 15 and 37 rejected
over Orignac are argued “as a single group with separate arguments being directed to the subject
matter of dependent claims 3, 5, 7 and 8,” and that appealed claims 2 through 4, 6, 7, 9 through
15 and 37 rejected over Xu are argued “as a single group with separate arguments directed to the
subject matter of dependent claims 3 and 7.” We find separate argument for claims 3, 5 and 7
(brief, pages 5 and 7), but not for claim 8 (brief and reply brief in entirety). Thus, we decide this
appeal based on appealed claims 37, 3, 5 and 7. 37 CFR § 1.192(c)(7) (1997).
We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellant, we
refer to the examiner’s answer and to appellant’s brief and reply brief for a complete exposition
thereof.
Opinion
In order to consider the examiner’s application of prior art to appealed claims 37, 3, 5 and
7, we must first interpret these claims in light of the written description in appellant’s
specification as it would be interpreted by one of ordinary skill in this art, see In re Morris, 127
F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997) (“[T]he PTO applies to the
verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.”), without reading into these claims any
of the application on appeal, and not where the evidence of anticipation is found in a literature
reference. A literature reference can be used as evidence of anticipation under 35 U.S.C. § 102(a)
(1975) if it is a printed publication by another that has an effective date before the claimed
invention was made by the applicant. We are of the opinion that the citation of the wrong
provision of § 102 by the examiner is harmless error because appellant’s burden is the same
under either § 102(a) or § 102(e), that is, the applicant must either patentably distinguish the
claimed invention over the reference or overcome the reference by affidavit or declaration of
prior invention under 37 CFR § 1.131 (1996), which reads in pertinent part, “(a)(1) When any
claim of an application . . . is rejected under 35 U.S.C. 102(a) or (e) based on a U.S. patent to
another or others which is prior art under 35 U.S.C. 102(a) or (e) . . . or on a reference . . . to a
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