Appeal No. 2001-1889
Application No. 09/222,453
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 examiner sets forth findings (Answer at 5-6) with respect to how Poradish is
deemed to meet the limitations of the claims before us. Appellants complain (e.g., Brief
at 3) that the rejection, even though set forth under section 102 for anticipation, seems
to pick and choose elements or steps from among the five separate methods described
by Poradish.
We agree with appellants that combining different embodiments found in a
reference does not normally support a finding of anticipation. 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).
Perhaps more important, however, we find that the examiner relies on certain
elements or steps in the reference that cannot be considered to meet the terms of the
instant claims.
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