Ex parte SAKAI et al. - Page 6




          Appeal No. 1999-1854                                                        
          Application No. 08/633,616                                                  


               It is our view, after consideration of the record before                                                                     
          us, that the disclosure of Fujii does not fully meet the                    
          invention as set forth in claims 1-21.  Accordingly, we                     
          reverse.                                                                    
               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 Systems, 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).                                                            
               The Examiner, in making the 35 U.S.C. § 102(b) rejection,              
          has grouped all of the appealed claims 1-21 together, and                   
          attempts to correlate (Answer, page 3) various structural                   
          features of Fujii with the various limitations of the appealed              
          claims.  In response, Appellants assert (Reply Brief, page 1)               
          that the Examiner has failed to address several claimed                     


                                          6                                           





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

Last modified: November 3, 2007