Appeal No. 96-2178
Application 08/146,901
§ 102(b) as clearly anticipated by Grant, or of the grounds of rejection under 35 U.S.C § 103: claim3
18 through 20 as unpatentable over Grant; claims 8 through 10 as unpatentable over Grant in view of
Decker; and claims 11 and 21 as unpatentable over Kagawa.4
It is well settled that anticipation under § 102 is a question of fact, based on the limitations in the
claims, and that in order to make out a prima facie case of anticipation, the examiner must point out
where each and every element of the claimed invention, arranged as required by the claims, is found in a
single prior art reference, either expressly or under the principles of inherency. See generally In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986); Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457, 221 USPQ 481, 485 (Fed.
Cir. 1984). It is equally well settled that the examiner may satisfy his burden of establishing a prima
facie case of obviousness under § 103 by showing some objective teachings or suggestions in the prior
art taken as a whole or that knowledge generally available to one of ordinary skill in the art would have
led that person to combine the relevant teachings of the applied prior art in the proposed manner to
arrive at the claimed invention, including each and every limitation of the claims, without recourse to the
teachings in appellants’ disclosure. See generally, In re Oetiker, 977 F.2d 1443, 1447-48, 24
USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring); In re Fine, 837 F.2d 1071, 1074-
76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531-32 (Fed. Cir. 1988). The examiner has failed to make out a prima facie case
under either statutory provision.
We begin our consideration of the issues in this appeal by determining the invention
encompassed by independent claims 1, 11, 12 and 14. See generally, Gechter v. Davidson, 116
F.3d 1454, 1457, 1460 & n.3, 43 USPQ2d 1030, 1032, 1035 & n.3 (Fed. Cir. 1997). We find
that claim 1 requires that the “second layer” has “a length and width equal to that of the first layer;”
3Grant and other references relied on by the examiner are listed at page 2 of the answer. We refer to
these references in our opinion by the name associated therewith by the examiner.
4We take the statement in the answer (page 4) that “[c]laims 8 through 11 and 18 through 21 are
rejected under 35 USC 103” as “set forth in the prior Office action paper number 8” to refer to the
three separate grounds of rejection set forth on pages 3-4 of the final rejection of November 29, 1994.
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