Ex parte BERG et al. - Page 7




          Appeal No. 1999-0475                                                        
          Application No. 08/402,031                                                  


          invention as recited in claims 7, 13, and 18-33.  Accordingly,              
          we reverse.                                                                 
               We consider first the Examiner’s 35 U.S.C. § 102(b)                    
          rejection of claims 1, 4-6, 8-12, 14, 16, and 17 as being                   
          anticipated by Montagna.  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 14, the Examiner              
          attempts to read the various limitations on the disclosure of               
          Montagna.  In particular, the Examiner points (Answer, page 4)              
          to the block diagram illustrations in Figures 1 and 4 of                    
          Montagna, as well as to Montagna’s description of the                       
          organization of stored “hyperpages” of text and graphics in                 
          the hierarchical indexing system illustrated in Figure 3.                   
                                          7                                           





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

Last modified: November 3, 2007