Appeal No. 2002-0220 Page 5
Application No. 08/964,496
of a vehicle door window between the glass panel and one of the door panels (claim 1)
or capable of engaging the linear channel of an automobile door (claim 9).
The examiner’s reading of the claim elements on Taylor’s device is set forth on
page 3 of the answer. Appellant argues that the clamps 30 of Taylor’s registration
device for positioning a silk screen frame against a smooth, flat surface or panel have a
different structure and function than the slides 30, 32 of appellant’s invention and could
not be used in the same manner to support the vehicle window from falling (brief, page
6). The examiner identifies Taylor’s clamps 30 as slides but offers no rationale and
points to no teaching in Taylor to show that the clamps 30 are dimensioned so as to be
capable of insertion between the glass panel and door panels of a vehicle door to
engage the window channel. Taylor certainly does not teach such a use of the clamps
30 of the registration device and we find nothing in the teachings of Taylor which would
lead one skilled in the art to conclude that the clamps 30 of Taylor are inherently3
capable of achieving the function set forth in claims 1 and 9.
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. RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir. 1984). In other words, there must be no difference between
the claimed invention and the reference disclosure, as viewed by a person of ordinary
3 Under principles of inherency, when a reference is silent about an asserted inherent
characteristic, it must be clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of ordinary skill. Continental
Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007