Appeal No. 2001-0547 Page 4
Application No. 08/689,400
in the art to make and use the invention, which is all that is required under this section
of the statute. They further point out that the statement in the claim “to avoid producing
air bubbles” would be understood by one of ordinary skill in the art to mean that the
one-way valve is installed in such a manner as to preclude air bubbles from being
produced during the operation of the device, that is, so oriented as to permit flow in the
direction in which bubbles are not produced, which is into the distal end of the
elongated tubular body.
The examiner has not explained why the presence of the disputed phrase in the
claims would cause one of ordinary skill in the art not to be enabled to make and use
the invention. It is our view that the specification describes the invention in such a
manner as to meet the requirements of the first paragraph of Section 112. This being
the case, we agree with the appellants that there is no basis for the rejection, and we
will not sustain it.
The Rejection Under Section 102
Claims 18, 19, 22, 23 and 26 stand rejected as being anticipated by Nicholas.
Anticipation is established only when a single prior art reference discloses, either
expressly or under the principles of inherency, each and every element of the claimed
invention. See In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed.
Cir. 1994) and In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir.
1990).
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