Ex parte MARUYAMA et al. - Page 6






             Appeal No. 1997-1181                                                             Page 6                 
             Application No. 08/000,735                                                                              



             in a core in a separate embedding step comprising pouring a                                             

             high viscosity resin between the core and windings and                                                  

             hardening the resin.                                                                                    

                    In light of the above, we shall not sustain the                                                  

             examiner’s rejection of claim 1, or claim 2 which depends from                                          

             claim 1, as being anticipated6 by the Japanese document.                                                

                                                   CONCLUSION                                                        

                    To summarize, the decision of the examiner to reject                                             
























                    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.  RCA Corp. v. Applied Digital Data Sys., Inc.,                          
             730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).  In other words,                               
             there must be no difference between the claimed invention and the reference                             
             disclosure, as viewed by a person of ordinary skill in the field of the                                 
             invention.  Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565,                          
             1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).                                                            







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