Appeal No. 1998-2707
Application No. 08/586,081
The deficiency in the section 102 rejection may be related to the indication on page
6 of the Answer that the relevant limitations are given "no weight" due to the alleged lack of
enablement. If that is the case, the section 102 rejection is flawed at the outset. To
anticipate a claim, a prior art reference must disclose every limitation of the claimed
invention, either expressly or inherently. In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997).
We therefore do not sustain the section 102 rejection, nor the section 103 rejection
of claims 2-4, 6, 8, 10-12, 14 and 16. The section 103 rejection does not deal with all the
requirements of independent claims 1 and 9, and fails at least on that basis. We note that,
at page 19 of the Answer, the examiner appears to submit appellants' arguments for
enablement as evidence of obviousness of the claimed subject matter. However, the
enablement issue is related to implementation of the details of the invention, rather than
what the prior art would have suggested to the artisan. Cf. Northern Telecom, Inc. v.
Datapoint Corp., 908 F.2d 931, 941, 15 USPQ2d 1321, 1329 (Fed. Cir 1990) (“The
claimed invention...is not in the details of the program writing, but in the apparatus and
method whose patentability is based on the claimed combination of components or
steps.”)
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