Appeal No. 1997-1060
Application No. 08/172,848
change in state of an output of one of the elements within the
semiconductor device rather than a change in state of an
output pin of the semiconductor device. Therefore, the
artisan would not have been placed in possession of the
presently claimed invention defined by independent claim 1 as
is required by 35 U.S.C. § 102. Accordingly, we will not
sustain the examiner’s rejection of claim 1 under 35 U.S.C. §
102(b). It follows that we also will not sustain the
examiner’s rejections of claims 2-6 and 8-10 based on Saito.
We now turn our attention to the rejection of claims 11
and 37 under 35 U.S.C. § 102(b) based on the disclosure of
Saito.
Initially, we note that anticipation under 35 U.S.C. §
102 is established only when a single prior art reference
discloses, expressly or under the principles of inherency,
each and every element of the claimed invention. See In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ 1429, 1431 (Fed. Cir.
1997); In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671,
1673 (Fed. Cir. 1994); In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1657 (Fed. Cir. 1990); RCA Corp. v. Applied
6
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