Appeal No. 2003-1796 Page 8
Application No. 09/513,563
by the appellants, claim 8 does not require such. Limitations are not to be read into the
claims from the specification. See In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d
1057, 1059 (Fed. Cir. 1993) citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989).
Since claim 8 is readable on both Dunbar and Rudoi, claim 8 is anticipated by
both Dunbar and Rudoi under 35 U.S.C. § 102(b). Affirmance of the 35 U.S.C. § 103
rejection is appropriate, since as set forth above "anticipation is the epitome of
obviousness." Thus, the decision of the examiner to reject claim 8 under 35 U.S.C.
§ 103 is affirmed.
Inasmuch as the basic thrust of our affirmance of the 35 U.S.C. § 103 rejection of
claim 8 is that the claim is anticipated rather than obviousness, we hereby designate the
affirmance to be a new ground of rejection pursuant to 37 CFR § 1.196(b) to allow the
appellants a fair opportunity to react thereto (see In re Kronig, 539 F.2d 1300, 1302-03,
190 USPQ 425, 426-27 (CCPA 1976)).
For the reasons set forth above, the decision of the examiner to reject claim 8
under 35 U.S.C. § 103 is affirmed, with the affirmance constituting a new ground of
rejection under 37 CFR § 1.196(b).
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