Appeal 2007-0439
Application 10/630260
To serve as anticipation when the reference is silent about the asserted
inherent characteristic, such gap in the reference may be filled with recourse
to extrinsic evidence. Such evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.
Continental Can Co. USA Inc. v. Monsanto Co., 948 F2d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991)
ANALYSIS
Appellants contend that the Examiner erred in rejecting claim 11
under 35 U.S.C. § 112 2nd paragraph. According to the Bancorp case cited
above, such a claim must be insolubly ambiguous to be rejected under this
statutory provision. Reviewing the Findings of Facts #1 above, we found
that the meaning of claim 11 can, and was, discerned. We, thus, conclude
that the Examiner erred, as expressed by Appellants.
Appellants contend that Examiner erred in rejecting claims 1 to 6, and
8 to 12 under 35 U.S.C. § 102(b). Reviewing Findings of Fact #2 to #7, we
find support for the rejection of claims 1 to 5 and 9 to 12 in the prior art as
recited in the ‘906 patent. The claimed elements in the context of a memory
interface device are present in the reference. However, we do not find
support for the rejection of claim 6 and its dependent claim 8. In Finding of
Fact #5 we found that the ICs need not be inherently in separate chips, and
thus the three chips of claims 6 and 8 are not anticipated by the reference.
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