Appeal 2007-0353
Application 09/255,352
citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc.,
976 F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992). Anticipation
of a patent claim requires a finding that the claim at issue “reads on” a prior
art reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346, 51
USPQ2d 1943, 1945 (Fed. Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).
ANALYSIS
With respect to the 35 U.S.C. § 102(e) rejection of independent claims
1, 4, 7, 11, 14, 17, 21, 24, 27, 31, and 32 based on the teachings of Sato, the
Examiner indicates (Answer 3-6) how the various limitations are read on the
disclosure of Sato. In particular, the Examiner directs attention to the
illustrations in Figures 1, 21, 31, and 32 of Sato, as well as the disclosure at
various portions of columns 1, 5, 14, 21, 22, and 27 of Sato.
Appellant’s arguments in response assert that the Examiner has not
shown how each of the claimed features is present in the disclosure of Sato
so as to establish a prima facie case of anticipation. Appellant’s arguments
(Br. 11) focus on the contention that, in contrast to the language of the
appealed claims which requires the determination of common key image
feature values from a user specified plurality of key images to be used as
search criteria, Sato never makes any determination of any common feature
values in the user designated image information to be used for comparison
with stored images in a database.
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