Appeal No. 1999-0033
Application No. 08/514,255
claim 5, we will select the second element, namely “the casing,” so that the clause
commencing with “at least one of . . .” may be interpreted as reciting that the vane
member has an elastically deformable portion connected to the casing.4
Still referring to claim 5, the ensuing phase “to obtain a decreased connecting
rigidity between the vane member and the casing in at least one of an impeller axial
direction, an impeller radial direction and an impeller circumferential direction, . . .”
contemplates several alternative limitations: (1) the impeller axial direction, (2) the
impeller radial direction, (3) the impeller circumferential direction and (4) any
combination of two or more of the aforesaid directions. For reviewing the art rejection of
claim 5 we will select the first alternative, namely the impeller axial direction, so that the
entire clause commencing with “at least one of the vane member . . .” and ending with “at
least one of an impeller axial direction, an impeller radial direction and an impeller
circumferential direction” may be interpreted as reciting that the vane member has an
elastically deformable portion connected to the casing to obtain a decreased connecting
rigidity between the vane member and the casing in at least the impeller axial direction.
Turning now to the § 102(b) rejection of claim 5, it is well settled that a prior art
reference must disclose every limitation of the claimed invention, either explicitly or
inherently, in order to anticipate a claim. In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997). Anticipation of a claim merely requires a
finding that the claim at issue “reads on” a prior art reference. Titanium Metals Corp. v.
Banner, 778 F.2d 775, 781, 227 USPQ 773, 778 (Fed. Cir. 1985).
4 Other alternative limitations are considered to be indefinite as discussed infra in our new ground of
rejection under 35 U.S.C. § 112, second paragraph. However, since the selected alternative limitation is
understandable, we can proceed with our review of the art rejections.
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