Appeal No. 2000-2228 Page 5
Application No. 09/067,153
“[H]aving ascertained exactly what subject matter is being claimed, the next
inquiry must be into whether such subject matter is novel.” In re Wilder, 429 F2d 447,
450, 166 USPQ 545, 548 (CCPA 1970). “A claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently described, in a
single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987) (citing Structural Rubber Prods. Co. v. Park
Rubber Co., 749 F.2d 707, 715, 223 USPQ 1264, 1270 (Fed. Cir. 1984); Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220 USPQ 193, 198 (Fed. Cir. 1983);
Kalman v. Kimberly-Clark Corp., 713 F.2d760, 771, 218 USPQ 781, 789 (Fed. Cir.
1983)). "[A]bsence from the reference of any claimed element negates anticipation."
Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571, 230 USPQ 81, 84 (Fed.
Cir. 1986).
Here, the examiner equates, (Examiner’s Answer at 5), the claimed control circuit
with Durham’s “macro 402, which in this embodiment includes 10 rows of self-resetting
domino logic.” Col. 3, ll. 47-49. “Data from register 401 [are] received by macro 402,”
col. 3, l. 47, explains the reference, and the macro outputs “data that [are] transmitted
to . . . AND circuit 404.” Id. ll. 56-58. The data output from the macro to the AND
circuit, however, are not the same (unmodified) data received by the macro. To the
contrary, the appellants, who are also Durham’s inventors, avow “that the SR
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