Appeal No. 2001-1211
Application No. 09/070,580
we find that the Examiner conducts an incomplete analysis for
determining the disclosed structure corresponding to the claimed
“position means.” Therefore, we do not agree with the Examiner’s
position that claim 8 does not require the entire servo circuit
and is limited only to coil driver 152 and coil 113 and
therefore, reads on the structure disclosed by Hashimoto (answer,
page 6). In fact, the Examiner appears to have overlooked the
complete disclosed structure necessary for positioning the head
by selecting only some of the elements to construct the
corresponding structure.
A rejection for anticipation under section 102 requires that
each and every limitation of the claimed invention be disclosed
in a single prior art reference. See Atlas Powder Co. v. Ireco
Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999);
In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed.
Cir. 1994). 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.
1984).
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