Appeal No. 95-4546
Application No. 08/071,008
through 18, and reverse the 35 U.S.C. § 103 rejection of claims
6, 7, 9, 19, 20 and 23.
Evidence of secondary considerations submitted in the
declarations must always be considered with respect to a
rejection under 35 U.S.C. § 103, but such evidence is irrelevant
where the reference is anticipatory of the claimed invention
under 35 U.S.C. § 102(b). See In re Malagari, 499 F.2d 1297,
1303, 182 USPQ 549, 553 (CCPA 1974). Without novelty, evidence
of unobviousness is superfluous. See In re Spada, 911 F.2d 705,
709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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. See
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).
Appellant’s only argument with respect to the rejection of
claim 1 under 35 U.S.C. § 102(b) is that “web 30 of Morofuji et
al is clearly and unequivocally not a piece of sheet material”
(Brief, paper number 16, page 7). The web or plastic film 30 in
Figure 2 of Morofuji is a “sheet material,” and the
electrophotographic units 2, 3 and 4 transform “the electronic
4
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