Appeal No. 1996-3860
Application 08/312,819
it forces the merits panel to resort to surmise and conjecture as to the examiner’s
reasoning as to why the amended claims are considered to be
unpatentable. Our review of the examiner’s rejection is premised upon the statements of
rejection made in the first Office action.
Rejection IV.
IV. Claim 9 -11, 13 -14, and 17 -18 stand rejected under 35 U.S.C. ' 102(e)/103
over Sauter. We reverse.
Anticipation is established only when a single prior art reference discloses,
expressly or under 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).
The examiner relies upon Sauter to show a process of forming an encapsulated or
wrapped medicinal caplet by shrinking two moistened gelatin capsule halves on the end of
each caplet to form a smooth, no-overlap capsule. It is the examiner’s position that all the
limitations of the claims are satisfied by the reference. However, as
correctly noted by the appellants, there are a number of differences between the
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007