Appeal No. 2001-1469
Application No. 09/001,284
examiner’s rationale in support of the rejection and arguments in rebuttal set forth in the
examiner’s answer.
It is our view, after consideration of the record before us, that the disclosure of
Orphanoudakis does not fully meet the invention as set forth in claims 1-11 and 13-18.
Accordingly, we reverse.
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 Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984);
W.L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303,
313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The examiner has indicated how he reads the claimed invention on the disclosure
of Orphanoudakis [answer, pages 3-7]. With respect to each of independent claims 1, 6
and 7, which stand or fall together as a single group [brief, page 6], appellant argues
that Orphanoudakis does not disclose automatically selecting a storage device by
analyzing patient diagnostic information as claimed. Appellant notes that the examiner
has admitted this fact and the examiner, therefore, has improperly relied on a second
reference which is cited in the Orphanoudakis article. Appellant argues that it was
improper for the examiner to rely on the additional teachings of Huang to support a
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