Appeal No. 1998-0292
Application No. 08/209,633
reviewing court that the limitations from the disclosure are not
to be imported into the claims. In re Lundberg, 244 F.2d 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 Appellants
have been considered in making this decision. Arguments which
Appellants could have made but chose not to make in the brief
have not been considered [37 CFR § 1.192(a)].
Furthermore, we are guided by the general proposition that
in an appeal involving a rejection under 35 U.S.C. § 103, 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 determined
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