Appeal No. 96-3992
Application 08/356,618
any of the dependent claims 9-14, we will consider the dependent claims to stand or fall together with
their respective base claim. Accordingly, dependent claims 9-11 will stand or fall with claim 5 and
dependent claims 12-14 will stand or fall with claim 1.
It is our view, after consideration of the record before us, that the disclosure of Kato fully meets
the invention as recited in claim 5 (with which dependent claims 9-11 fall together). We are also of the
view that the evidence relied upon and the level of skill in the particular art would not have suggested to
one of ordinary skill in the art the obviousness of the invention as set forth in independent claim 1 (with
which dependent claims 12-14 stand together). Accordingly, we
affirm-in-part.
We consider first the rejection of independent claim 5 under 35 U.S.C. § 102(b) as anticipated
by Kato. 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 as well as disclosing structure
which is capable of performing the recited functional limitations. RCA Corp. v. Applied Digital Data
Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228
(1984); W.L. Gore and Assoc, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With respect to independent claim 5, the Examiner has indicated how the various limitations
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