Appeal No. 96-0113
Application 07/848,779
In any event, it is not the case that a claim needs to
recite each and every element needed for the practical
utilization of the claimed subject matter. We follow the stated
position in Hughes Aircraft Co. v. United States, 640 F.2d 1193,
1197, 208 USPQ 785, 789 (Ct. Cl. 1980), that a basic principle of
patent law is that "it is not necessary to claim in a patent
every device required to enable the invention to be used."
The rejection of claims 1-7 and 11-18
as being anticipated by Sullivan '501
In his answer on page 3, the examiner stated that the
anticipation rejection of claims 1-7 and 11-18 "is set forth in
the prior Office action paper number 13.” In that connection, in
Paper No. 13, which is the the final rejection of the claims, the
examiner stated only (on page 2): "Claims 1-7, 11-18 are
rejected under 35 U.S.C. § 102(b) as being clearly anticipated by
Sullivan et al. '501." There, the examiner made no findings with
respect to any rejected claim, except for finding (Paper No. 13,
at 4) that "the use of 'simultaneously' function as recited in
the claims is old as shown by Sullivan et al '501." For the
anticipation rejection under 35 U.S.C. § 102, no other feature of
any rejected claim was addressed in the final Office action,
even though each claim includes various other features.
Section 102 of Title 35, United States Code begins:
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