Appeal No. 1997-2859
Application 08/340,676
543, 113 USPQ 530 (CCPA 1957); In re Queener, 796 F.2d 461,
230 USPQ 438 (Fed. Cir. 1986). We are also mindful of the
requirements of anticipation under 35 U.S.C. § 102. We must
point out, however, that anticipation under 35 U.S.C. § 102 is
established only when a single prior art reference discloses,
either expressly or under the principles of inherency, each
and every element of a claimed
invention. See RCA Corp. V. Applied Digital Data Systems,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984),
cert. dismissed, 468 U.S. 1228 (1984). Furthermore, only
those arguments actually made by Appellant have been
considered in making this decision. Arguments which Appellant
could have made but chose not to make in the briefs have not
been considered [37 37 CFR § 1.192(a)].
Furthermore, in an appeal involving a rejection under
35 U.S.C. § 103, we are guided by the general proposition that
an examiner is under a burden to make out a prima facie case
of obviousness. If that burden is met, the burden of going
forward then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
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