Ex parte HUSTON et al. - Page 11




          Appeal No. 1999-0172                                                        
          Application 08/334,733                                                      


          does not respond to the various method steps in claims 10 and               
          27 which require performance in a freight yard.  Accordingly,               
          we shall not sustain the standing 35 U.S.C.  102(b) rejection              
          of claims 10 and 27, or of claims 11 and 28 through 31 which                
          depend therefrom, as being anticipated by Mansell.                          


               Claim 1, on the other hand, mentions the “freight yard”                
          only in the functional context of describing the intended use               
          of various components of the claimed system.  In other words,               
          claim 1 does not recite the “freight yard” as a positive                    
          element of the claimed system.  It is not apparent, nor have                
          the appellants cogently explained, why the system disclosed by              
          Mansell would not be inherently capable of use in a freight                 
          yard.  Thus, Mansell meets the functional limitations in                    
          question under principles of inherency.  Hence, the                         
          appellants’ position that the subject matter recited in claim               
          1 is not anticipated by Mansell is unpersuasive.                            


               Therefore, we shall sustain the standing 35 U.S.C.                    
          102(b) rejection of claim 1, and of dependent claims 2, 3 and               
          5 through 9 which are grouped therewith for purposes of this                
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