Appeal No. 1994-3610
Application 07/805,474
With respect to the first grouping of claims, i.e., claims 1-2, 11, 14-19, 26-31, 33-34, 37-38
and 41-43, independent claim 41 is designated to be representative of this grouping. We note that
all three independent claims, i.e., claims 1, 31 and 41, are included in this grouping. All three of these
independent claims are also rejected under 35 U.S.C. § 102 (b) as being anticipated by either Wazaki
or Tanitsu. As a result, we will evaluate the anticipation rejections of independent claim 41.
A claim is anticipated under 35 U.S.C. § 102 if “each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art reference.” In re Robertson,
169 F.3d 743, 745, 49 USPQ2d 1949, 1950 (Fed. Cir. 1999) (quoting Verdegaal Bros., Inc. v.
Union Oil Co., 814 F.2d 628, 631, 2 U.S.P.Q.2d 1051,1053 (Fed.Cir.1987)). The Federal Circuit
further stated that “(t)o establish inherency, the extrinsic evidence ‘must make clear that the missing
descriptive matter is necessarily present in the thing described in the reference, and that it would be so
recognized by persons of ordinary skill.’…’Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.’” Id. at 745, 49 USPQ2d at 1950-51 (quoting Continental Can Co.
v. Monsanto Co., 948 F.2d 1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed.Cir.1991).
With respect to the first anticipation rejection, the Examiner describes how Wazaki is being
applied on pages 6-7 of the Examiner’s Answer. In response to this application of prior art, the
Appellant argues that Wazaki does not achieve Appellant’s key benefit of voltage amplification due to
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