Appeal No. 1997-2455
Application 08/318,235
disclosed in the prior art, is rejected under 35 U.S.C. § 102
rather than under 35 U.S.C. § 112, second paragraph. See In
re Hyatt, 708 F.2d 712, 715, 218 USPQ 195, 197 (Fed. Cir.
1983) (citing In re Borkowski, 422 F.2d 904, 909, 164 USPQ
642, 645-46 (CCPA 1970)). Claims 78 and 83 are dependent on
claims 65 and 70 respectively and are also formatted as an
“[a]pparatus for practicing the method of claim.”
Accordingly, by the same analysis as applied above with
respect to claim 77, we find that claims 78 and 83 are
definite.
Next, we turn to the rejection of claim 29 under 35
U.S.C.
§ 102 as anticipated by Beigel. We find that Beigel
anticipates claim 29. 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 Sys. Inc., 730 F.2d 1440, 1444, 221 USPQ
385,388 (Fed. Cir.), cert. dismissed, 468 U.S. 1228 (1984); W.
L. Gore & Assocs., Inc. v. Garlock Inc., 721 F.2d 1540, 1554,
11
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007