Appeal No. 1998-0496
Application 08/356,966
obviousness of the invention as set forth in claims 2-6 and 8-11.
Accordingly, we reverse.
We consider first the rejection of independent claims 1 and
7 as being anticipated by the disclosure of Saito. 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 and Associates, Inc. v. Garlock,
Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983),
cert. denied, 469 U.S. 851 (1984).
With respect to each of claims 1 and 7, the examiner
indicates how he reads these claims on the disclosure of Saito on
page 3 of the answer. Appellant points primarily to the elements
labeled “(a-3)” and “(a-4)” in claim 1 and the steps labeled
“(c)” and “(d)” in claim 7 as claim recitations which are not met
by Saito. According to appellant, what the examiner identifies
in Saito as generating an address by updating a first address by
a value of the run length plus one does not in fact meet the
recitation of claims 1 or 7 [brief, pages 4-7]. The examiner has
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