Ex Parte Huang - Page 5



                   Appeal No. 2006-2187                                                                                           
                   Application No. 10/642,413                                                                                     

                   meaning, particularly to those skilled in the art at the relevant time.  See                                   
                   Studiengesellschaft Kohle v. Dart Indus., Inc., 726 F.2d 724, 726-727, 220                                     
                   USPQ 841, 842-843 (Fed. Cir. 1984).                                                                            
                          We must point out, however, that anticipation under 35 U.S.C. § 102                                     
                   is established only when a single prior art reference discloses, either                                        
                   expressly or under the principles of inherency, each and every element of a                                    
                   claimed invention.  See RCA Corp. v. Applied Digital Data Systems, Inc.,                                       
                   730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).                                                       
                          From our review of the Examiner’s rejection in the Answer, we                                           
                   cannot agree with the Examiner’s formulation of the rejection based upon                                       
                   anticipation over the Tan reference.  We agree with Appellant that Tan does                                    
                   not teach that covering 12 is “formed over” housing 16 with outer surface 29                                   
                   being the raised portion with both design and background surfaces which are                                    
                   not level.  We find the Examiner’s correlation to be unclear and                                               
                   unreasonable in light of Appellant’s disclosed invention.  Therefore, we                                       
                   cannot sustain the rejection of claims 1 and 12 based upon Tan alone.                                          
                                                       35 U.S.C. § 103                                                            
                          In rejecting claims under 35 U.S.C. § 103, the examiner bears the                                       
                   initial burden of presenting a prima facie case of obviousness.  See In re                                     
                   Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).  A                                        
                   prima facie case of obviousness is established by presenting evidence that                                     
                   the reference teachings would appear to be sufficient for one of ordinary                                      
                   skill in the relevant art having the references before him to make the                                         
                   proposed combination or other modification.  See In re Lintner, 458 F.2d                                       


                                                                 5                                                                

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next

Last modified: September 9, 2013