Appeal 2006-2911
Application 10/005,551
Rather than repeat the arguments, we make reference to the Briefs and the
Answer for the respective positions of Appellants and the Examiner.
DISCUSSION
The Briefs and the Answer reveal that Appellants and the Examiner disagree
on the proper construction of the term “multiplexer” and whether Daniels discloses
“selection data being a function of the most-significant bit of the representative set
of least-significant bits of the first binary operand.”
A rejection for anticipation under section 102 requires that each and every
limitation of the claimed invention be disclosed in a single prior art reference. See
Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947
(Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673
(Fed. Cir. 1994). 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 as well as disclosing structure which is capable of
performing the recited functional limitations. RCA Corp. v. Applied Digital Data
Sys. Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). The
elements must be arranged as required by the claim, but this is not an ipsissimis
verbis test and identity of terminology is not required. In re Bond, 910 F.2d
831,834, 15 USPQ2d 1566, 1568 (Fed. Cir. 1990). A patent examiner gives claims
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