Appeal No. 1999-1081 Page 4
Application No. 08/458,983
the core, and a conduit attached to the cross strut. Claim 16 (which depends from claim 1)
adds a groove within the core of the building block and claim 17 (which depends from
claim 16) further requires that there be a spline having a portion of such structure as to
render it adapted to be connected to the groove. From our perspective, while this might
be considered to be a very broad recitation of the construction of the inventive building
block, it is not indefinite merely because it does not positively connect the spline to the
groove.
The rejection of claim 17 under the second paragraph of 35 U.S.C. § 112 is not
sustained.
The Rejection Under 35 U.S.C. § 102(b)
Anticipation is established only when a single prior art reference discloses, either
expressly or under the principles of inherency, each and every element of the claimed
invention. See In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir.
1994) and In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
The examiner is of the view that all of the elements of the claimed invention are
disclosed in either Marks or Dunker. The appellants assert in rebuttal that Marks and
Dunker each are directed to a building panel of reinforced concrete, which is different from
the building block which is the subject of independent claim 1, and therefore the references
do not anticipate the subject matter recited in the claims. In support of this position, the
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