Appeal No. 2001-1493 Page 5
Application No. 09/109,016
While we appreciate the examiner’s position that Yerkes is thus not intended to be limited
to a “standard three-hole puncher” (answer, page 4), we do not find in Yerkes any head
assembly (cutout punch head and corresponding cutout die) which forms at least one
“cutout” as that term is defined in appellant’s specification and used in claim 10, as
discussed supra.
Having determined that Yerkes does not disclose each and every element recited in
2
appellant’s claim 10, we conclude that the subject matter of claim 10 is not anticipated by
Yerkes. It follows that rejection (1) is not sustained.
Turning to rejection (2), we note that independent claim 15 requires three punch3
heads and dies which form punch outs in a sheet thus enabling said sheet to be bound by
the rings of a three ring binder and a cutout punch head and die which make a cutout in an
4
oversize sheet and that independent claim 24 recites three punches which create punch
outs in a sheet of material and a cutout punch which creates a cutout in the sheet of
material. Claims 12 and 14 depend from claim 10, discussed supra, claims 17, 20 and 21
depend, either directly or indirectly, from claim 15, and claim 25 depends from claim 24.
Anticipation is established only when a single prior art reference discloses, expressly or under the2
principles of inherency, each and every element of a claimed invention. RCA Corp. v. Applied Digital Data
Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
The “punch out punch heads” referred to in the fourth paragraph of claim 15 lack strict antecedent3
basis. We presume that “said punch out punch heads” refer to the first outer, middle and second outer
punch heads recited in the first paragraph of claim 15. However, the inconsistency in claim language is
deserving of correction. Additionally, in the fifth paragraph of claim 15, “to” (second occurrence) should be
deleted.
In the seventh paragraph of claim 24, “body” should apparently be --handle–.4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007