Appeal No. 1999-2328 Page 7
Application No. 08/485,492
in the claims on appeal was in the possession of the inventor at the time the application
was filed, that it is sufficient to have enabled one of ordinary skill in the art to make and
use the invention, and that the claims, when considered in the light of the original
disclosure, do particularly point out and distinctly claim the subject matter which the
appellant regards as the invention.
We therefore will not sustain any of the rejections under 35 U.S.C. § 112.
The Rejections Under Section 102
Claims 1, 2, 6-8 and 11 stand rejected as being anticipated by Pryor or Joffe.
What immediately strikes us about these references is that the effective filing date of
each may be subsequent to the effective filing date of the claims on appeal. Thus, on
its face, neither Pryor nor Joffe may qualify as a prior art reference under 35 U.S.C.
§ 102(b) or (e), and both rejections under Section 102 may be fatally defective on this
basis. Of course, since the application before us is a continuation-in-part of a
preceding application, which in turn is a continuation of another, the possibility exists
that the claimed subject matter is not disclosed in both of the applications from which
parentage is claimed, and therefore the effective filing dates of the two references could
antedate that which can be accorded to one or more of the claims before us on appeal.
The examiner has not, however, undertaken such an analysis. In this regard, Pryor and
Joffe were mentioned on page 5 of the appellant’s specification as being “of interest,”
with Pryor being discussed on page 8 and the appellant asserting that it was not prior
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