Appeal No. 2001-1779
Application No. 09/398,898
The examiner relies on the following references:
Ohata et al (US ‘926) 4,333,926 Jun. 08, 1982
Kelly (WO ‘069) WO 93/23069 Nov. 25, 1993
Claim 2 stands rejected as follows (Examiner’s Answer, pages 3 and 4):
(1) Under 35 U.S.C. § 102(b) as being anticipated by WO ‘069;
(2) Under 35 U.S.C. § 102(b) as being anticipated by US ‘926; and
(3) Under 35 U.S.C. § 103(a) as being unpatentable “over either
WO ‘069 or US ‘926, each in view of the other.”
We reverse all appealed rejections.
Discussion -- Anticipation
“Rejection for anticipation or lack of novelty requires, as the first step in
the inquiry, that all the elements of the claimed invention be described in a single
reference.” In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir.
1990), citing Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d
1913, 1920 (Fed. Cir. 1989). A reference which does not explicitly disclose a
particular element of a claim may still be considered anticipatory if the reference
inherently discloses that element. In re Robertson, 169 F.3d 743, 745, 49
USPQ2d 1949, 1950 (Fed. Cir. 1999). However, to establish that a particular
element is inherently disclosed by a reference, the examiner must establish that
the descriptive matter missing from the reference is necessarily present in the
reference’s disclosure, and that persons of ordinary skill would recognize the
presence of that element. Id. at 745, 49 USPQ2d at 1950-51, citing Continental
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