Appeal No. 2002-1996 Page 6
Application No. 09/086,312
Kalman v. Kimberly-Clark Corp., 713 F.2d760, 771, 218 USPQ 781, 789 (Fed. Cir.
1983)). "[T]here is no anticipation 'unless all of the same elements are found in exactly
the same situation and united in the same way . . . in a single prior art reference.'"
Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894, 221 USPQ 669, 673
(Fed. Cir. 1984) (citing Kalman, 713 F.2d at 771, 218 USPQ at 789).
Here, although the examiner purports to apply only one reference, he relies on
teachings of multiple inventions mentioned in Arai. Often the examiner relies on
descriptions of the invention shown in Figure 6 of Arai. (Final Rejection1 at 2;
Examiner's Answer at 4-5.) Specifically, the reference calls this invention "the third
embodiment of the invention." Col. 5, ll. 17-18.
To support his aforementioned assertion, however, the examiner relies on a
passage of Arai describing "the above conventional technique. . . ." Col. 3, l. 14. This
conventional technique is not described as part of Arai's invention. To the contrary, it
"is a technique disclosed in JP-U-64-4491." Col. 1, ll. 32-33. The examiner's reliance
1We advise the examiner to copy his rejections into his examiner’s answers
rather than merely referring to a “rejection . . . set forth in prior Office Action. . . .”
(Examiner’s Answer at 3.)
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