Appeal No. 98-1529 Page 5
Application No. 08/446,375
This rejection is not sustained.
The Rejection Under 35 U.S.C. § 102(b)
Anticipation is established only when a single prior art
reference discloses, either expressly or under the principles
of inherency, each and every element of the claimed invention.
See In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671,
1675 (Fed. Cir. 1994). Claim 6 contains the step of “treating
a surface” of one or more components “by forming micro holes .
. . [which] penetrate less than the thickness of the
components.” From our perspective, Yamaguchi has two
shortcomings as an anticipatory reference. First, there is no
teaching in Yamaguchi of treating a surface in order to produce
the required micro holes. The reference simply states that a
“capillary condensation means having multiple hollows or
capillary tubes” that may be “of a porous material” is
installed in the wall of the disk enclosure (translation, pages
3 and 4). The reference does not describe how this element is
formed, and does not teach “treating a surface” at all, much
less treating it to form micro holes. The second deficiency is
that even if the capillaries of Yamaguchi are considered to be
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