Ex parte GOTTLIEB - Page 12




          Appeal No. 97-0655                                                          
          Application 08/294,913                                                      


          as recited in independent claim 13 would destroy the very                   
          purpose for which Pease was designed as discussed above.                    
          Therefore, we do not sustain this rejection of claims 13-17.                
          4. The rejection of claim 1 under 35 U.S.C.                                 
                    § 102(b) as being anticipated by Jamison.                         




          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 Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385,              
          388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.                
          Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,                  
          1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469                 
          U.S. 851 (1984).                                                            
          The examiner indicates how he “reads” claim 1 on                            
          Jamison on page 10 of the answer.  Appellant argues that                    
          Jamison is similar to Pease and suffers the same deficiencies               
          [reply brief].  Appellant also argues that Jamison is directed              

                                        -12-                                          





Page:  Previous  2  3  4  5  6  7  8  9  10  11  12  13  14  15  16  Next 

Last modified: November 3, 2007