Appeal No. 1999-0035
Application No. 08/661,261
not have suggested to one of ordinary skill in the art the
obviousness of the invention as recited in claims 2-4 and 7-
10. Accordingly, we reverse.
We consider first the rejection of claims 1, 5, and 6
under 35 U.S.C. § 102(b) as being anticipated by Graham.
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 Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir.), cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With respect to independent claims 1 and 6, the Examiner
attempts (Answer, page 3) to read the various claim
limitations on the disclosure of Graham. In particular, the 1
Examiner points to the discussion at column 6, lines 27-54 of
1 The Examiner’s statement of the grounds of rejection
refers to the final Office action mailed May 11, 1998, paper
no. 9.
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