Appeal No. 1997-4373 Page 6
Application No. 08/332,656
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
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. RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir. 1984). In other words, there
must be no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill
in the field of the invention. Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001,
1010 (Fed. Cir. 1991). With regard to claim 1, the
appellants argue that Fujimori lacks, inter alia, a delivery
valve positioned in the output port of the fuel injection pump
(reply brief, page 3) and the examiner has not responded to
that argument. The examiner's only explanation with regard to
the limitations of claim 1 is that "[i]n particular, the
delivery valve (65). Additionally, "said conduit" in claim 1, line 7, and
"the pumping stroke" in claim 27 lack clear antecedent basis in the claims.
These issues should be addressed in the event of any further prosecution
before the examiner.
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