Appeal No. 2003-1614 Page 7
Application No. 09/817,692
1440, 1446, 221 USPQ 385, 390 (Fed. Cir. 1984). "[A] disclosure that anticipates under
Section 102 also renders the claim invalid under Section 103, for 'anticipation is the
epitome of obviousness.'" Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220
USPQ 193, 198 (Fed. Cir. 1983) (quoting In re Fracalossi, 681 F.2d 792, 794, 215
USPQ 569, 571 (CCPA 1982)). "[A]nticipation is a question of fact." Hyatt, 211 F.3d at
1371, 54 USPQ2d at 1667 (citing Bischoff v. Wethered, 76 U.S. (9 Wall.) 812, 814-15
(1869); In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir.
1997)).
Here, because the claims of Roth appear to include all the limitations of claims 1-
6 of the application, the former claims seem to anticipate the latter claims. The
obviousness of claims 1-6 of the application, therefore, would likely follow ipso facto
from the anticipation. In an ex parte appeal, however, "the Board is basically a board of
review — we review . . rejections made by patent examiners." Ex parte Gambogi, 62
USPQ2d 1209, 1211 (Bd.Pat.App. & Int. 2001). Having no double patenting rejection
based on obviousness before us to review, we leave the issue to the examiner and the
appellant.1
1A terminal disclaimer may be used to obviate a double patenting rejection based
on obviousness. 37 C.F.R. § 1.130(b) (2003). For his part, the "[a]ppellant would
certainly consider the filing of an appropriate terminal disclaimer should such be
ultimately required by the Examiner." (Appeal Br. at 5.)
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