Ex parte IRVIN R. STRAUSS, et al. - Page 5




          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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