Appeal No. 1999-2033 Page 4
Application No. 08/737,928
articulated by the appellants in their brief and reply brief (Paper Nos. 14 and 17) and by the
examiner in the answer. As a consequence of our review, we make the determinations
which follow.
The anticipation rejection
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 skill in
the field of the invention. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d
1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
Reach discloses a golf iron 20 including a blade 22 adapted to receive and hold a
bottom plate 30, the plate 30 provided with an upwardly extending projection 40
adapted to fit into a suitable recess 41 at the back of the blade 22. The projection 40 is
provided with a plurality of tapered sockets which may be left empty or which may be filled
with weights 44 of lead or other heavy material and the main part 49 of the plate 30 is
provided with a plurality of holes 48 into which lead or other slugs 50 may be dropped at
any desired points longitudinally of the club head in order to achieve weighting near the
center of the club or toward the heel or toe as desired. Preferably the holes 48 are also
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