Ex Parte CHARNESKI - Page 4
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Appeal No. 1997-1131
Application No. 08/395,119
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).
Our review of the record before us indicates that the
Examiner, despite asserting the anticipatory nature of the
disclosure of Bailey with respect to the appealed claims, has
never attempted to show how each of the claimed limitations is
met by the prior art. Instead, the Examiner has made a vague
reference to Figure 1 of Bailey which illustrates a block diagram
of an X-Y matrix of light emitting devices and draws the
conclusion as stated at page 2 of the Answer that:
“... one can readily draw or activate any number
of boxes filling the claimed requirements
from the display of Bailey et al.
We find such assertion to be totally lacking of any support
on the record. Our review of Bailey indicates no disclosure of
the generation of symbols or digits of any kind, let alone the
specific arrangement recited in the claims. We are not inclined
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