Appeal No. 2005-1117
Application 10/078,043
we find can have the structure of Eckhouse FIG. 2 that includes iris 20 and other components
which “control the spectrum and the size of the exposed area,” with respect to the therapeutic
electromagnetic treatment of external skin disorders and certain disorders under the skin, as well
as certain invasive procedures (e.g., col. 5, l. 26, to col. 8, l. 62). We find that the exposure area
provided by such apparatus can be circular as well as rectangular and of different dimensions,
and can include an exposure area of small dimension, such as to treat warts which are well
known to be caused by viruses (e.g., col. 6, ll. 11-34, col. 8, ll. 22-23, and col. 18, l. 22). We
further find that Eckhouse discloses coupling the broad-spectrum electromagnetic radiation to a
light guide, in order to couple the light to the treatment area, wherein the light guide may be
circular or rectangular to match the shape of the area to be treated (e.g., col. 8, l. 62, to col. 11,
l. 59).
It is well settled that in order for the examiner to establish a prima facie case of
anticipation, each and every element of the claimed invention, arranged as required by the claim,
must be found in a single prior art reference, either expressly or under the principles of
inherency. See generally, In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed.
Cir. 1997); Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78, 7 USPQ 1315,
1317 (Fed. Cir. 1988); Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick,
730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). Here, with respect to claim 1, we
find as a matter of fact, that one skilled in the art can place at least iris 20 of the handheld
flashlamp of Eckhouse proximate the in-vivo location of the pathogen on and in the plant or plant
part in the same manner as a physician would place this part of the flashlamp proximate the skin
of a patient, adjusting the exposure area, electromagnetic radiation and intensity within the area
and ranges taught by the reference. Thus, we agree with the examiner that the flashlamp
apparatus disclosed by Eckhouse inherently satisfies each and every element of the claimed
apparatus encompassed by claim 1, arranged as required by that claim, and that, therefore, the
burden rests with appellants to establish that the handheld flashlamp of Eckhouse is inherently
incapable of performing the function of meaningfully suppressing the growth potential of any
pathogen in-vivo specified in the claim. See Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.
With respect to claim 11, we find as a matter of fact, that one skilled in the art can place
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