Appeal No. 1999-2611
Application No. 08/808,537
the particular art would not have suggested to one of
ordinary skill in the art the invention as recited in
claims 1 and 2. Accordingly, we reverse.
We consider first the rejection of claims 1 and 2
under 35 U.S.C. § 102(b) as being anticipated by Tonai.
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 appealed claims 1 and 2, the
Examiner attempts to read the various limitations on the
electrode structure disclosure of Tonai, directing
attention to the illustration in Figure 3 and the
accompanying description at columns 3 through 5. The
Examiner further calls particular attention to column 3,
5
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