Appeal No. 1999-2051
Application No. 08/716,615
The examiner has not shown how the specific requirements of claim 1 are met by
the reference. We note that the test for anticipation is narrow, and further note that claim 1
is drafted in "means plus function" format.
Anticipation is established only when a single prior art reference discloses,
expressly or under principles of inherency, each and every element of a
claimed invention. Furthermore, with an element expressed in terms of a
means plus function, "absent structure [in a prior art reference] which is
capable of performing the functional limitation of the ‘means,' [the prior art
reference] does not meet the claim."
RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388
(Fed. Cir. 1984) (citations omitted).
Thus, even if the examiner might deem the reference to disclose something that
could be considered a "variation value correction frame determination means," the law of
anticipation requires that the reference also associates the identical functions required by
claim 1 with that "means." A corollary to this rule is that there may be structural equivalents
as contemplated by 35 U.S.C. § 112, sixth paragraph, different from the disclosed
structures corresponding to the claimed “means,” that may fall within the requirements of
anticipation under 35 U.S.C. § 102. However, any "equivalents" must perform the identical
function required by the claim, even though the structure associated with that function may
be different from the corresponding structure disclosed by the applicant.
We therefore cannot sustain the rejection of claim 1 under 35 U.S.C. § 102, nor of
claims 2 and 3 depending therefrom. Instant claim 4, although in language of different
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