Appeal No. 95-0537
Application No. 08/077,709
Appellants conclude, and we agree, that Eom discloses an a-
axis film where about 50% of the c-axes are aligned in one
direction and about 50% of the c-axes are aligned in another
direction (Brief, p. 23). Therefore, Eom fails to anticipate
the invention of claim 1. See Verdegaal Bros., Inc. v. Union
Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.),
cert. denied, 484 U.S. 827 (1987) ("A claim is
anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a
single prior art reference."). The rejection of claims 1, 2
and 5 under 35 U.S.C. § 102(a)/103 is reversed.5
Rejection under 35 U.S.C. § 102(e)
Claims 1, 2 and 5 are rejected under 35 U.S.C. § 102(e)
as being anticipated by Beasley. Beasley discloses a method
of selectively growing an a-axis or a c-axis oriented film of
YBa Cu O . According to the examiner (Answer, p. 12):
2 3 7-x
Beasley recognizes, as Applicant does, that lowering
5According to the examiner (Answer, p. 10), the rejection
"is also being made under both 102/103, because Eom does not
'explicitly' disclose 'at least 1 micron squared'." Since,
for the reasons set forth above, the teachings of Eom fail to
expressly disclose or suggest the other limitations of claim
1, it is not necessary to address this additional limitation.
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