Appeal No. 95-1998
Application No. 08/028,627
OPINION
We reverse.
With regard to the rejection under 35 U.S.C. ' 102(e),
anticipation requires that each element of the claim in issue be
found, either expressly described or under principles of
inherency, in a single prior art reference. Kalman v. Kimberly-
Clark Corp., 713 F.2d 760, 771, 218 USPQ 781, 789 (Fed. Cir.
1983).
We do not find, in Tsuchida, the presence of, and the
examiner admits as much [answer-page 4], the claimed
rearrangement of the order of comparison operations within the
logical combination to generate a modified search query so that
there is a substantially minimized expected cost of applying the
modified search query to any individual one of the records. The
examiner bases his finding of such on “inherency.” More
particularly, the examiner states, at page 4 of the answer, that
“when a procedure is selected based upon accessing index of one
of the columns [in Tsuchida], inherently, the comparison for the
particular column would have been executed first because that is
the first piece of information provided to the system.”
We do not agree with the examiner’s finding of “inherency.”
Tsuchida is interested in choosing a particular processing
procedure which leads to optimization. However, once that
procedure is chosen, while it may affect the order in which
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