Appeal No. 1997-3697
Application 08/273,455
evidence with respect to whether one of ordinary skill in this art would have had the knowledge to
practice the invention as disclosed in the specification (brief, pages 5-8, and reply brief, pages 1-4) and
the examiner has considered only one of the documents, alleging that undue experimentation would still
be required even in view thereof (answer, pages 3-5). Accordingly, because the examiner has not
carried the requisite burden, we reverse this ground of rejection.
Turning now to the ground of rejection under 35 U.S.C. § 102(b), it is well settled that
anticipation under § 102 is a question of fact, based on the limitations in the claims, and that in order to
make out a prima facie case of anticipation, the examiner must point out where each and every element
of the claimed invention, arranged as required by the claims, is found in a single prior art reference,
either expressly or under the principles of inherency. See generally, In re King, 801 F.2d 1324, 1326,
231 USPQ 136, 138 (Fed. Cir. 1986); Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1457, 221 USPQ 481, 485 (Fed. Cir. 1984). With respect to the
interpretation to be made of the claim language in light of the written description in appellants’
specification as interpreted by one of ordinary skill in this art, see In re Morris, 127 F.3d 1048, 1054-
55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997), we find that appellants do not quarrel with the meaning
that the examiner has given to the terms “dimple,” “two dimensions” (brief, page 8) and “array” (reply
brief, page 4) in the phrase “two-dimensional array of dimples” (answer, page 3, citing the Office action
of December 6, 1994 (Paper No. 5; page 4), and page 5). We observe that the definition of “array”
relied on by the examiner is listed in Webster’s II New Riverside University Dictionary 126 (1988) as
“4. Math. a. . . . ,” as is also the case in The American Heritage Dictionary Second College Edition
129 (1982), which definition clearly has to do with the arrangement of recorded data. Thus, we find
that the appropriate ordinary meaning of the term “array” in the context of the disclosed and claimed
invention is “1. An orderly arrangement; esp. of troops.” Webster’s II New Riverside University
Dictionary, supra; Webster’s II New Riverside University Dictionary, supra. Accordingly, we
conclude that, in the context of claim 3 and in light of the written description in appellants’ specification,
the claim phrase “two-dimensional array of dimples” is reasonably interpreted as an orderly arrangement
we will not consider this ground of rejection. See Manual of Patent Examining Procedure § 1208 (7th
- 3 -
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007