Ex parte TAKIZAWA - Page 3

              Appeal No. 1999-1504                                                                      Page 3                
              Application No. 08/787,262                                                                                      

                      Reference is made to the main and reply briefs (Papers No. 12 and 15) and the final                     
              rejection and answer (Papers No. 9 and 13) for the respective positions of the appellant and the                
              examiner with regard to the merits of these rejections.                                                         
                      In reaching our decision in this appeal, we have given careful consideration to the                     
              appellant's specification and claims, to the applied prior art references, and to the respective                
              positions articulated by the appellant and the examiner.  As a consequence of our review, we                    
              make the determinations which follow.                                                                           
                                                 The anticipation rejections                                                  
                      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).  It is not necessary that the reference teach what the subject                     
              application teaches, but only that the claim read on something disclosed in the reference, i.e.,                
              that all of the limitations in the claim be found in or fully met by the reference.  Kalman v.                  

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007