Appeal No. 2001-0522
Application No. 08/887,830
OPINION
Anticipation requires the presence in a single prior art reference disclosure of
each and every element of the claimed invention, arranged as in the claim. Lindemann
Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221
USPQ 481, 485 (Fed. Cir. 1984).
The statement of rejection of claim 1 (Answer at 3) refers to various portions of
Kojima deemed to disclose structures corresponding to the instant claimed elements.
However, we observe that the rejection points to separate embodiments disclosed by
Kojima. For example, column 8, lines 1 through 28 refers to the “Hanoi towers”
embodiment; column 17, lines 15 through 47 refers to a second embodiment in which
the program personifies a human secretary. Ordinarily, reading a claim on separate
embodiments described in a reference would not support a finding of anticipation, but
might be subject to an inquiry under obviousness. Whether there is suggestion to
combine elements or steps of different embodiments is an inquiry under obviousness,
rather than anticipation. “Even when obviousness is based on a single prior art
reference, there must be a showing of a suggestion or motivation to modify the
teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313,
1316-17 (Fed. Cir. 2000).
In any event, appellants submit that neither the “Hanoi towers” embodiment nor
the “human secretary” embodiment meets the terms of the instant claims. In particular,
-3-
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007