Ex parte HARA et al. - Page 4




          Appeal No. 1996-2637                                                            
          Application No. 08/190,566                                                      

          (2) Claims 12 and 13 under 35 U.S.C. § 103 as unpatentable                      
          over the disclosure of Robin;                                                   
          (3) Claims 4 through 11, 13 and 14 under 35 U.S.C. § 103 as                     
          unpatentable over the combined disclosures of either Bielfeldt                  
          or Dannels and Mafilios; and                                                    
          (4) Claims 4 through 14 under 35 U.S.C. § 103 as unpatentable                   
          over the combined disclosures of Takahashi and Sors.                            
               We reverse each of the foregoing rejections.                               
               We turn first to the examiner’s § 102(b) rejection of                      
          claims 4 through 11 and 14 as anticipated by the disclosure of                  
          Robin.  To anticipate the claimed subject matter under Section                  
          102(b), Robin must disclose, either expressly or under the                      
          principles of inherency, each and every claim limitation.  See                  
          In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed.                      
          Cir. 1990); RCA Corp. v. Applied Digital Data Sys., Inc., 730                   
          F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).                            
               Here, the examiner refers to only some of the claimed                      
          limitations allegedly taught by Robin.  See the Answer, page                    
          5.  The examiner, for example, refers to Robin’s disclosure                     
          regarding the enlargement of the mold cavity by 0.01 inch and                   
          attempts to equate that distance with the claimed distance L.                   

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