Appeal No. 2001-2268
Application 08/922,581
distinctly claims the invention of that claim. In other words,
the scope of claims 24-28 can be perfectly clear regardless of
whether or not these claims are directed to the elected
invention. Therefore, the examiner’s reasoning that these claims
are vague and indefinite simply because they allegedly are not
directed to the elected invention does not establish a prima
facie case of unpatentability. The question of whether the
restriction requirement was properly made does not fall within
our jurisdiction. The propriety of a restriction requirement is
reviewable by petition under 37 CFR § 1.144.
We now consider the rejection of claims 1, 3, 6, 10, 29,
37 and 43 under 35 U.S.C. § 102(b) as being anticipated by the
disclosure of Foelkel. 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).
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