Appeal No. 1998-2204
Application No. 08/470,432
The anticipation rejection
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. RCA Corp.
v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.
1984). In other words, there must be no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill in the field of the invention.
Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d
1001, 1010 (Fed. Cir. 1991).
Claim 26 requires "a relatively soft shock absorbing member" interposed between the
rod pipe and fishline guide member "for absorbing shock therebetween." The sleeve 15 of
Barnett relied upon by the examiner as meeting this limitation is of "reinforcing material, ideally
that of the rod blank sections" provided to compensate for the weakening of the rod due to
formation of the opening 10 therein (column 3, lines 5-9). The rod material, and hence the
sleeve 15, is ideally formed from glass reinforced plastics material (column 5, lines 17-18). In
light of this disclosure, we consider unreasonable the examiner's position, stated on page 5 of
the answer, that the sleeve 15 is "a relatively soft shock absorbing member."
In proceedings before it, the PTO applies to the verbiage of claims the broadest
reasonable meaning of the words in their ordinary usage as they would be understood by one
of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or
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