Appeal No. 1997-3694
Application No. 08/277,013
specification and equivalents thereof.” (Brief, page 12.) On pages 8 through 10 of the Brief, in the
“Summary of Invention” section, appellant relates claim language to embodiments disclosed in the
specification. We agree with appellant that, for anticipation, “each element of the claimed invention
must be identically shown, or at least have a structural equivalent capable of performing the same
function.” (Brief, page 13.)
The examiner’s error appears to be in equating structures in the admitted prior art with instant
claim language on the basis of similarity in the overall functions performed -- that is, using algorithms for
positioning electronic parts on a mounting body. However, before reaching consideration of possible
structural “equivalents,” a prior art structure must have an identity of function, or at least be capable of
performing the function, associated with the claimed element. An element-by-element comparison with
the prior art is necessary.
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.
Furthermore, with an element expressed in terms of a means plus function, “absent
structure [in a prior art reference] which is capable of performing the functional
limitation of the ‘means,’ [the prior art reference] does not meet the claim.”
RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.
1984)(citations omitted).
Anticipation is determined by comparison of the reference with the claims. The claims
here define the invention in terms of several specific "means-plus-function" elements.
The limitations which must be met by an anticipatory reference are those set forth in
each statement of function. In re Mott, 557 F.2d 266, 269, 194 USPQ 305, 307
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