Appeal No. 96-1534
Application 07/888,991
must suggest performing the specific substep which corresponds to
its associated condition when that condition is satisfied. Thus,
if the reference teaches that substep (1) is carried out when the
condition for substep (4) is satisfied, then the invention of the
claim has not been suggested. Independent claim 28 is similar to
claim 25 except that only three substeps are included in the
“and” relationship. Each of these substeps as well must be
performed when the associated condition is satisfied.
We consider first the rejection of claims 28-30 under 35
U.S.C. § 102(e) as being anticipated by the disclosure of Li.
These claims stand or fall together [brief, page 6; reply brief,
page 7]. 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 Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
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