Appeal No. 96-0659
Application 08/081,040
suggested to one of ordinary skill in the art the obviousness of the invention as set forth in
claim 3. Accordingly, we affirm.
We consider first the rejection of claims 1, 2, 4 and 5 under 35 U.S.C. § 102(e) as
being anticipated by the disclosure of Tam ’926. Claims 1, 4 and 5 stand together as one
group of claims, and claim 2 stands separately [brief, page 6]. Anticipation is established
only when a single prior art reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well as disclosing structure
which is capable of performing the recited functional limitations. RCA Corp. v. Applied
Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert.
dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates, Inc. v. Garlock, Inc., 721
F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
With respect to independent claim 1, the examiner has indicated how he reads claim
1 on the disclosure of Tam ’926 [answer, pages 3-4]. Appellant responds that the last
three elements of claim 1 are not disclosed by Tam ’926 [brief, pages 8-10]. We agree
with the examiner for reasons which will become clear below.
With respect to the means for estimating values recited in claim 1, appellant argues
that Tam ’926 has such a means, but it does not use the cone beam data to make this
estimate. Appellant asserts that Tam ’926 performs an iterative process using known prior
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